Jan 12, 2024 (Newsletter Issue 1/24)Geneva Act (1999) RatifiedOn December 14, 2023, the Government of Italy deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“1999 Act”).
Italy has been a Contracting Party to the 1960 Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“1960 Act”) since June 13, 1987. In this regard, in 2001, the Italian Patent and Trademark Office informed WIPO that the maximum duration of protection provided for by the legislation of Italy in respect of industrial designs is 25 years, which has been applicable to a designation of Italy under the 1960 Act. Accordingly, the maximum duration of protection of 25 years will continue to apply in respect of a designation of Italy irrespective of the applicable Act, pursuant to Article 11(2) of the 1960 Act and Article 17(3)(b) of the 1999 Act, respectively.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act will enter into force with respect to Italy on March 14, 2024.
The ratification by Italy of the 1999 Act brings the number of Contracting Parties to this Act to 73. The total number of Contracting Parties to the Hague Agreement remains at 79. A list of the Contracting Parties to the Hague Agreement is available on the WIPO website here.Source: www.wipo.int Jan 12, 2024 (Newsletter Issue 1/24)Geneva Act (1999) RatifiedOn November 13, 2023, the Government of Greece deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“1999 Act”).
The instrument of ratification was supplemented by the following declarations under the 1999 Act:
the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Greece is 12 months from the filing date; and
the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Greece in respect of industrial designs is 25 years.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations will enter into force with respect to Greece on February 13, 2024.
The ratification by Greece of the 1999 Act brings the number of Contracting Parties to this Act to 72. The total number of Contracting Parties to the Hague Agreement remains at 79. A list of the Contracting Parties to the Hague Agreement is available on the WIPO website here.Source: www.wipo.int Jan 12, 2024 (Newsletter Issue 1/24)New Trademark Protection GuidelinesThe Swiss Federal Institute of Intellectual Property (IPI) published its new guidelines in trade mark matters on 1 January 2024. The new guidelines concern the classification of goods and services in connection with virtual environments. They contain explanations on adapting the IPI's practice with regard to trade mark applications in connection with virtual goods, non-fungible tokens (NFTs), and services in virtual environments.
By adapting these guidelines, the IPI is responding to the challenges posed by the constant development of technology and intangible assets.
For more details click here.Source: www.mme.ch Jan 12, 2024 (Newsletter Issue 1/24)Expedited Examination of TM Applications More DifficultSince January 1, 2024, the Korean Intellectual Property Office (KIPO) no longer accepts a prior trademark search conducted through a specialty agency designated by KIPO as a basis for expedited examination.
Consequently, it has become more difficult for those who need to promptly secure trademark rights in Korea but encounter difficulty in meeting the other criteria for requesting expedited examination, making it even more essential to carefully plan suitable filing strategies.
For more details click here.Source: www.ip.kimchang.com Jan 12, 2024 (Newsletter Issue 1/24)New Service Standards for Trademarks in EffectNew and more realistic service standards for trademarks came into effect on January 1, 2024. The amendments by the Canadian Intellectual Property Office (CIPO) aim at better reflecting examination time and at increasing predictability for applicants.
The amendments significantly lengthen the previous service standards but will not result in a lengthening of the trademark registration process.
For more details click here.
Source: www.stikeman.com Jan 12, 2024 (Newsletter Issue 1/24)
Adopting the Madrid Goods and Services List
IP Australia will replace the current Trade Marks Goods and Services list (the AU picklist) with the Madrid Goods and Services (MGS) list in 2024.
The MGS list is a database of terms used to classify goods and services for trade mark applications in the Madrid System. It's used by the World Intellectual Property Organization (WIPO) and many international trade mark offices. It contains a wider range of terms than the AU picklist.
Adopting the MGS list will align Australian classification standards with international best practice. This change will make it easier for Australian exporters to protect their trade marks in other countries.
This change is expected to take place in March 2024. At that time, a semantic search function will be introduced. This will help customers find terms on the MGS list that have a similar meaning to the term they're looking for. It makes searching the MGS list easier and ensures a seamless transition from the AU picklist.
The new system will help reduce the number of issues for Australians filing internationally and provide access to a more comprehensive database of trade mark classification terms.
Source: www.ipaustralia.gov.au
Jan 12, 2024 (Newsletter Issue 1/24)Trademark Fees IncreasedAs announced earlier, the Canadian Intellectual Property Office (CIPO) has increased most of its fees by 25% as of January 1, 2024.
For more details click here.Source: www.groupetcj.ca Dec 30, 2023 (Newsletter Issue 1/24)
Madrid e-Filing Now Available
The San Marino State Office for Patent and Trademarks (USBM) has introduced the Madrid e-Filing to the public. Madrid e-Filing allows San Marino trademark owners to expand the protection of their national trademark registrations in a secure and online environment. The e-filing solution allows users to communicate directly with USBM and receive and respond to irregularities issued by WIPO online, saving time and avoiding misunderstandings.
Source: www.wipo.int
Dec 11, 2023 (Newsletter Issue 10/23)New Circular Provides Additional GuidanceOn November 30, 2023, Vietnam’s Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN detailing the implementation of some articles of the 2022 Intellectual Property Law (“IP Law”) and Decree No. 65/2023/ND-CP with respect to the establishment and protection of industrial property rights (“Circular 23”). Circular 23 took immediate effect upon issuance and provides further guidance and necessary clarifications for the implementation of the IP Law, which took effect on January 1, 2023.
For more details click here.Source: www.tilleke.com Dec 01, 2023 (Newsletter Issue 10/23)Proposed Fee Changes Open for Public ConsultationIP Australia has released its 2024-2025 draft Cost Recovery Implementation Statement outlining proposed fee changes. It is open to public consultation until Sunday 21 January 2024.
IP Australia is committed to reviewing its fees every 4 years to assess the entity’s cost recovery arrangements in accordance with the Australian Government Charging Framework. Regular and ongoing reviews help to ensure IP Australia’s fees reflect efficient and effective costs, that fee setting is transparent and accountable, and fees are set to recover the costs associated with administering the IP Rights system in Australia.
All submissions received during the former public consultation period on the current fee structure from 24 May 2023 until 2 July 2023 were considered.
For more details click here.Source: www.ipaustralia.gov.au Nov 29, 2023 (Newsletter Issue 10/23)Patent Office to Take Lead in Trademark CancellationsLaw No. 6769 on Industrial Property (“IP Law”) was published in the Official Gazette on January 10, 2017, and the majority of its provisions came into effect on the same date. However, Article 26 of the IP Law, titled "Cancellation Cases and Cancellation Request," was scheduled to come into effect seven years after the publication of the law. Decisions regarding the cancellation of registered trademarks will be made by the Turkish Patent and Trademark Office (“TPTO”) starting from January 10, 2024. Turkish Patent and Trademark Office released a draft regulation on October 20, 2023, regarding the implementation of the cancellation system. The public consultation period for this draft has ended. The aim of this regulation is to align with EU Directive No. 2015/2436 of the European Parliament and EU Regulation No. 2015/2424 of the European Parliament. The amendment is expected to make the trademark cancellation process easier, faster, and more cost-effective.
For more details click here.Source: kplawtr.com Nov 23, 2023 (Newsletter Issue 10/23)
Upcoming Change in Official Fees
The UAE Cabinet of Ministers has issued Cabinet Resolution No. (112) of 2023, addressing services provided by the Ministry of Economy, with a focus on patents, industrial designs, and utility models.
This resolution entails the reinstatement of official fees for all zero-rated services affected by the previous Cabinet Resolution No. (20) of 2020. The revised fee structure will affect various services, including annuities, publications, assignments, amendments, restorations, and more.
Additionally, new services have been introduced, such as expedited examination, payment based on the number of claims, increase in the number of claims, and re-examination with minimal errors.
Moreover, a revised fee schedule, featuring decreased charges, has been implemented for academic entities.
The Cabinet issued this resolution on November 13, 2023, and it will take effect on January 13, 2024, within 60 days of its publication in the official gazette.
Source: www.agip.com
Nov 23, 2023 (Newsletter Issue 10/23)Improvements to Online Case ManagementAs of November 23, 2023, the Intellectual Property Office of New Zealand (IPONZ) has implemented some improvements of its online case management facility.
- Plant Variety Rights (PVR) renewal notifications will be provided three months before the variety’s renewal due date and, if the renewal fee is not yet paid by that time, again one month before the variety’s renewal due date.
- New options to include renewal or maintenance due dates when conducting searches for intellectual property (IP) cases
- Case management facility allows to file requests to remove or add agents more easily.
- New look and feel for for patent renewal and publication notices.
For more details click here.Source: www.iponz.govt.nz Nov 09, 2023 (Newsletter Issue 9/23)Invited to Join BRICSArgentina has been invited to join the BRICS group of emerging economies, a major geopolitical development that could have a significant impact on the country's future. The invitation came from the BRICS leaders at their 15th summit in South Africa in August 2023, and Argentina is expected to become a full member of the group on January 1, 2024.
The BRICS group is made up of Brazil, Russia, India, China, and South Africa. It is one of the most important economic blocs in the world, with a combined GDP of over $25 trillion and a population of over 3 billion people. BRICS members are also major players in global trade and investment.
Membership in BRICS is expected to give Argentina a number of benefits, including:
-Increased access to trade and investment opportunities.
-Greater cooperation on development projects.
However, there are also some potential challenges associated with Argentina's membership in BRICS, one of them being the different political systems and economic models of the countries.
For more details click here.Source: https://marcasur.com Nov 09, 2023 (Newsletter Issue 9/23)
New Administrative Requirements for Trademark Renewal Drafted
According to a most recent announcement of the Hellenic Industrial Property Organization (OBI), new administrative requirements for trademark renewal and change recordal petitions are being discussed.
Specifically with respect to trademark renewal petitions, these may in the future be required to be accompanied with:
1. a Power of Attorney, duly legalized with Apostille.
2. an official document (duly legalized with Apostille) confirming that the person who has signed the Power of Attorney is the legal representative of the trademark proprietor.
However, there is no change of practice, until further notice, because the discussion is not finalized yet.
Source: www.vklaw.gr
Nov 08, 2023 (Newsletter Issue 9/23)New Trade Marks Law Receives Royal AssentOn 17 October 2023, the Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received royal assent.
The new law is based on that of the UK. It significantly modernises Bermuda's existing trade marks regime.
Key changes include:
- Removal of the graphical representation requirement for trademarks
- An increased term of initial registration from seven to 10 years
- A reduced renewal term from 14 years to 10 years
- The introduction of the 12th Edition of the Nice Classification of goods and services with retroactive effect from 1 January 2023
- The removal of the "split" Part A and B registration system
- Protection for collective and certification marks, and for well-known trade marks under Article 6bis of the Paris Convention.
- Claims to Paris Convention priority will be honoured as well as claims to priority from other relevant overseas applications.
- Access to International Applications in accordance with the Madrid Protocol upon Bermuda's accession.
Accompanying trade mark regulations, forms and fees are awaited to bring the legislation into full effect. For more details click here.Source: www.ogier.com Nov 08, 2023 (Newsletter Issue 9/23)OCPI to Become Depositing and Accessing Office of the WIPO Digital Access ServiceThe Cuban Industrial Property Office (OCPI) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as a depositing and accessing office of the WIPO Digital Access Service with effect from January 1, 2024.
For more details click here.
Source: www.wipo.int Nov 07, 2023 (Newsletter Issue 9/23)
12th Edition of the Nice Classification Adopted
In a remarkable step towards developing its intellectual property framework, the Saudi trademarks office (SAIP) has taken a great step by adopting the 12th edition of the Nice Classification. This update marks a jump from the outgoing 11th edition.
Some of the salient changes that came along with this adoption is that class heading can no longer be claimed whilst the selection of goods should be in exact conformity with the list of goods of the 12th Edition of the Nice Classification.
Source: www.jahcoip.com
Nov 01, 2023 (Newsletter Issue 8/23)
Apostille Convention to Enter into Force
On Nov. 7, 2023, the Apostille Convention will come into force in China. China acceded to the Convention Abolishing the Requirement of Legalization for Foreign Public Documents (known as “the Apostille Convention”) on March 8, 2023. So far, there are 125 contracting Parties of the Apostille Convention.
As China’s accession to the Apostille Convention, the once costly and time-consuming legalization process will be much simplified. From Nov. 7, a foreign public document with an Apostille certificate can be used in China without further diplomatic or consular legalization, and vice versa. In view of usual practice, the various notarized documents, e.g. Power of Attorney and proof of identity which are most frequently used in litigation matters of patent and trademark, will be recognized by China’s authorities with simply an Apostille certificate provided. With this option being available, companies and individuals, both domestic and abroad, will surely benefit from its convenience.
China’s competent authorities to issue the Apostille will be Ministry of Foreign Affairs and the Foreign Affairs Offices at provincial and municipal levels.
Source: www.pcassociates.cn
Oct 28, 2023 (Newsletter Issue 8/23)
Accession to the Geneva Act of the Lisbon Agreement
On October 18, 2023, the Government of Portugal deposited its instrument of ratification to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indication (“Geneva Act”).
With this ratification, the Geneva Act now offers protection in 21 Contracting Parties covering up to 57 countries, while the Lisbon System covers up to 72 countries in total.
The ratification will allow Portugal to protect both its appellations of origin and geographical indications under the Geneva Act, including those in the non-agricultural product category.
The Geneva Act will enter into force with respect to Portugal on January 18, 2024.
Source: www.wipo.int
Oct 26, 2023 (Newsletter Issue 8/23)
Official Trademark Fees to be Raised
Patent and Trademark Office has established new official fees that will come into effect as of December 1st, 2023.
In general, the new fees range from 200% to 400% higher compared to the current ones.
Source: www.palacio.com.ar
Oct 20, 2023 (Newsletter Issue 8/23)Upcoming Changes to the Practice On December 1, 2023, there will be changes to the practice in trademark opposition proceedings and in Section 45 proceedings in Canada. To ensure faster and more efficient procedures, the Trademarks Opposition Board (TMOB) has decided to reduce the current benchmarks for extensions of time and the cooling off period.
For further information, please check the article of Therrien Couture Joli-Coeur, our Country Index Partner for Canada hereSource: Therrien Couture Joli-Coeur LLP Oct 18, 2023 (Newsletter Issue 8/23)Update to Trade Mark Practice GuidelinesIPONZ has updated its practice guidelines to clarify its practices on trade mark applications that involve non-fungible tokens, virtual goods and services, and manufacturing services.
For more details click here.Source: www.iponz.govt.nz Oct 18, 2023 (Newsletter Issue 10/23)Entry Into Force of the New Copyright LawMyanmar's Copyright Law (referred to as "the New Act"), which was enacted on May 24, 2019, has come into effect on October 31, 2023, as per Notification No. 218/2023 dated October 18, 2023, thereby repealing the Myanmar Copyright Act of 1914 (referred to as "the Old Act").
Similar to copyright laws in many other countries, copyright protection in Myanmar is now granted automatically upon the creation of a work. As a result, registering copyrights in Myanmar is considered optional but recommended for enforcement purposes.
Under the New Act, the standard term of copyright protection is the lifetime of the author plus 50 years from the year following the author's death for literary or artistic works. The Old Act, which only protected works first published in Myanmar or created by Myanmar citizens or residents provided for a protection term extending to the creator's life plus thirty years after their death.
The New Act introduces several other changes. For more details click here.Source: www.mondaq.com Oct 15, 2023 (Newsletter Issue 8/23)
New Regulation on Formalities
A new regulation on formalities of required documents for the registration of intellectual property rights came in force recently: Particularly, from June 26, 2023, the required documents for IPRs registration in Laos including Power of Attorney, Assignment, Licensing, Declaration of Change... should simply be signed. Notarization is no longer required. As a result, applicants for IP rights will have more convenience in IPRs registration in Laos.
Source: www.daitin.com.vn
Oct 15, 2023 (Newsletter Issue 8/23)
Madrid e-Filing Now Live
Mongolia is the latest Madrid System Member – and the first in East Asia – to sign up to the Madrid e-Filing service, bringing the number of intellectual property (IP) Offices using the platform to 21.
Starting October 15, 2023, trademark holders from Mongolia are able to file their applications for an international trademark registration online, directly via the website of the Intellectual Property Office of Mongolia (IPOM).
Madrid e-Filing will allow Mongolian trademark owners to expand the protection of their national trademark registrations in a secure and online environment. The biggest advantage for Mongolian users is to communicate directly with IPOM and receive and respond to irregularities issued by the WIPO online. It offers applicants a convenient and time saving process.
Source: www.wipo.int
Oct 10, 2023 (Newsletter Issue 8/23)Key Changes in IP Filing SystemAs part of its continual work to improve Indonesia’s intellectual property (IP) e-filing system, the Directorate General of Intellectual Property (DGIP) makes regular updates and upgrades to the system.
Below is a summary of some key changes and updated requirements for trademark applications using the IP e-filing system.
- Applicants must choose their desired goods and services from the list, and the wording used in the provided list is not editable. The DGIP frequently updates the list of goods and services, but there is no regular schedule for the updates to this database. It is very difficult to request the addition of goods or services to the list, especially if a similar alternative exists. Therefore, it is crucial for applicants to decide on the goods or services to indicate in the application as soon as possible before the list is updated, as goods and services are sometimes deleted from the list.
- Once the government fee is paid, the goods or services that have been chosen cannot be amended, even if the application has not yet been submitted.
- If a trademark registration is in the renewal grace period (i.e., the period after its expiration date during which it can still be renewed), it is not possible to submit any recordal of name change, address change, or assignment.
In recent months, there have been changes regarding the IP filing system for designs and patents as well. For further details, please click here.Source: www.tilleke.com Oct 10, 2023 (Newsletter Issue 8/23)
Trademark Rules Tightened with Multiple-Class and Affidavit Stipulations
Cambodia recently tightened its trademark procedures by restricting the filing of separate single-class applications for a mark covering multiple classes, and tightening the deadline for filing affidavits of use or non-use. The latter requirement is especially consequential for existing registered trademark owners, as disregarding it could result in removal of the registered mark from Cambodia’s trademark registry.
Multiple-Class Applications
Cambodia’s Ministry of Commerce announced on August 1, 2023, that the Department of Intellectual Property Rights will now only accept a single application for a trademark covering more than one international class.
This means that multiple-class applications are mandatory for applications covering more than one class. Previously, trademark applicants were allowed to file separate single-class applications for the same mark covering multiple classes. The new rule, which took effect immediately, aims to reduce unnecessary paperwork and facilitate the trademark registration process.
Period for Filing Affidavits of Use or Non-Use
On August 11, 2023, the Ministry of Commerce issued a notification stating that trademark registrants who miss the deadline for filing an affidavit of use or non-use will no longer be allowed to file an affidavit after the deadline or at the time of filing the trademark renewal, as had previously been allowed.
This is in line with the Sub-Decree Concerning the Filing of an Affidavit of Use or Non-Use, which requires registered trademark owners to file an affidavit of use or non-use of the trademark within one year following the fifth anniversary of the mark’s registration or renewal.
Importantly, the notification announces that registered trademarks will be removed from the registry if the trademark owner fails to file an affidavit of the mark’s use or non-use within the required time period.
This announcement applies to both domestic registrations and international registrations made under the Madrid Protocol.
Although the notification does not explicitly state an effective date, trademark owners would be prudent to assume they should file any necessary affidavits of use or non-use that are past the legally required time period as soon as possible or face potential removal of their trademark registration from the registry.
Source: www.tilleke.com
Oct 10, 2023 (Newsletter Issue 10/23)
New Authority for Intellectual Property Established
Egypt recently adopted Law 163 of 2023 which establishes the Egyptian Authority for Intellectual Property (EAIP) as the only state body authorized to grant and register all types of intellectual property rights.
Authority over IP matters, so far divided among multiple administrative bodies, will be integrated and centralized under EAIP, which will also assist judicial, administrative and police authorities in IPR matters. It is expected that EAIP will become operational within one year.
Source: www.cwblegal.com
Oct 02, 2023 (Newsletter Issue 10/23)
New Administrative Instruction on TM Registration
The new Administrative Instruction (AI) on Trademark Registration Procedures No. 08/2023, which entered into force on August 14, 2023, addresses the most important changes brought by the new Law on Trademarks, in force as of July 2022.
Besides elaborating the novelties introduced by the new trademark law and clarifying certain aspects of various procedures, the new AI also states that the Kosovo Intellectual Property Office (IPO) has accepted WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. This means that the IPO can now refuse an application for a mark that is in conflict with a well-known international trademark even if the latter is not registered in Kosovo.
Additionally, the Kosovo IPO has accepted the list of recommendations from the INTA Board Resolution on Bad Faith Trademark Applications and Registrations when assessing if an application was filed in bad faith.
Finally, according to the new AI, parties in an opposition procedure are now obliged to inform the IPO within 30 days from the date of the decision of the Complaint Committee of the Ministry of Industry, Entrepreneurship and Trade if a lawsuit against the decision has been filed with the competent Court. Otherwise, the IPO will consider the Complaint Committee’s decision as final.
Source: www.petosevic.com
Oct 02, 2023 (Newsletter Issue 10/23)
Trademark Holder Privacy Improved
In order to meet trademark owners’ increasing privacy concerns, the Benelux Office for Intellectual Property (BOIP) recently stopped showing trademark owners’ addresses by default in its Trademarks Register.
While IP representatives’ addresses remain fully visible by default, the Register now only shows trademark owners’ name and town/city. Only users logged into the BOIP website whose My BOIP accounts contain at least one valid trademark, design or i-DEPOT registered with BOIP are now able to see trademark owners’ street and postcode.
BOIP has announced that it will implement the same change in its Designs Register.
Source: www.petosevic.com
Sep 25, 2023 (Newsletter Issue 8/23)
New Decree Details the 2022 IP Law
On August 23, 2023, the Vietnamese government issued Decree No. 65/2023/ND-CP. It took immediate effect upon issuance and provides long-awaited, necessary guidance for implementation of the IP Law, which took effect on January 1, 2023. Some of the most critical provisions of Decree 65 include the following:
Establishment of Industrial Property Rights
Procedures for Establishment: The procedures for the establishment of IP rights are set out including the procedures related to PCT applications for inventions and Madrid applications for trademarks, and the (newly added) procedures related to Hague applications for industrial designs. The decree confirms that registration certificates can be issued in electronic form and in paper form. However, hard copy registration will only be issued under explicit request in the application.
Amendment: For amendment of a trademark specimen, only minor disclaimed elements can be removed, if such removal does not alter the distinctiveness of the registered mark. The documents required for amendment of trademark registration are simplified.
Assignment: New provision are added regarding the limitation to the transfer of trademark rights that may cause confusion as to the properties or origin of the goods bearing the trademark.
Opposition: While both oppositions and third-party opinions can be submitted against national applications, there is no opposition procedure under the Decree for Madrid applications designating Vietnam. Only the third party opinion scheme is available for the application’s examination, as a source of reference.
Enforcement of Industrial Property Rights
Determination of Acts, Nature, and Extent of Infringement: Amendments are introduced to the definition of acts conducted on the internet considered as infringement in Vietnam with greater specificity. The grounds to determine the factors constituting infringement have been extended to include the Extract of the National Registrar of Industrial Property.
Determination of Damage: Detailed grounds for the determination of property damage and moral damage are provided.
Process of Handling IP Infringement: The handling of infringing goods is now implemented either upon the decision of the relevant authorities or upon the request of the owner of the IP rights. This brings an additional avenue for action, rather than the implementation of such measures solely at the discretion of the authorities.
Procedure for Control of Imported and Exported Goods Related to Industrial Property: Specific details are added regarding the authority, order, and procedures for proactively suspending customs procedures of goods that show clear signs of infringement.
Assessment of Infringement: New regulations on the procedure of conducting IP assessment (expert opinion).
Source: www.tilleke.com
Sep 14, 2023 (Newsletter Issue 7/23)
Limited Functionality of E-Register and TM Public Search
Due to the increased load on the TM application and database servers, the core
functions of the TM Registry are affected. Until an upgrade of hardware and software
are completed, the TM public search and E-register will not be available from 10 a.m.
to 4:30 p.m. with effect from September 14, 2023, on all working days.
Source: www.ipindia.gov.in
Sep 14, 2023 (Newsletter Issue 7/23)
Prices for Business Services to Increase
The Danish Patent and Trademark Office will adjust the prices for our business services per 1 October 2023 following the generally increasing costs in 2022 and 2023.
The hourly rate will be increased to DKK 1,400 ex. VAT, which will also entail a price adjustment of our fixed price business services.
Source: www.dkpto.org
Sep 14, 2023 (Newsletter Issue 7/23)Revised Guidelines for Opposition Proceedings in ForceThe Guidelines for Opposition Proceedings Under Trade Mark Law (Richtlinie für das markenrechtliche Widerspruchsverfahren) have been revised, implementing in particular extensive legal amendments, such as, most recently, the ones made by the Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz). In addition, the Guidelines take into account and reflect the continuing development of court decisions on fundamental questions.
The revised version of the Guidelines for Opposition Proceedings Under Trade Mark Law entered into force on 13 September 2023. They are addressed to parties to proceedings, the IP community and the trade mark sections of the German Patent and Trade Mark Office.
The text of the Guidelines can be accessed here.Source: www.dpma.de Sep 05, 2023 (Newsletter Issue 7/23)Change in Official FeesThe Cabinet of Ministers made changes to its Resolution "On approval of the Procedure for payment of fees for actions related to the protection of rights to intellectual property objects”, which enters into force on September 18, 2023.
In particular, the amount of the discount for submitting trademark applications in electronic form was increased to 25% from the current 20%. Thus, the application fee for each class (without specifying the color) is reduced to 3,000 UAH ($82) from 3,200 UAH ($88).
The fee for an appeal against a decision on a trademark application has doubled – up to 6,800 UAH ($186) instead of 3,400 UAH ($93).
In addition, new items have been added to the list of fees that should unlock the post-grant opposition mechanism for inventions, utility models, and industrial designs.
For more information click here.Source: www.craneip.com Sep 04, 2023 (Newsletter Issue 7/23)Trade Marks (Amendment) Rules to Enter into ForceJamaica's Trade Marks (Amendment) Rules 2022 (rules) are expected to come into effect on 30 September 2023.
An update to the rules was required following the entry into force of the Madrid Protocol in Jamaica on 27 March 2022. The rules outline the procedures to be followed in respect of international trade mark applications designating Jamaica and international applications in respect of which Jamaica is the country of origin.
Notably, the Rules have also been updated to increase official trade mark prosecution fees across the board, introduce a process for requesting the expedited examination and processing of applications, and set out formality requirements for non-traditional trade mark applications.
Official trade mark prosecution fees will be increased for all types of national applications effective 30 September 2023. Applications for registrations filed prior to 30 September 2023 will be processed in accordance with the current fees regime, even if publication and registration fees do not become payable until after 30 September 2023.
Trade mark applicants will be permitted to request expedited examination for new applications. There is also an option to request that other types of applications or requests be processed on an expedited basis upon the payment of an additional fee. The request for expedited examination made at the time of initial filing will result in an almost doubling of trade mark application costs for a single class application. It is not yet known how quickly expedited applications will be examined, but currently the examination of regular applications is generally taking longer than six months to be completed.
With regard to the filing of non-traditional trade marks (three-dimensional shapes, colour, sound, pattern, touch, taste, smell, hologram and multi-media marks, for example), the rules introduce updated formality requirements. They include the acceptance of audio files (to support applications for sound marks), video files (to support applications for hologram marks) and audio-visual files (to support applications for multi-media marks). Applications for smell and taste marks may contain the chemical formulation that creates the scent or taste. Jamaica's Trade Mark Act still calls for the graphical representation of trade marks and this is still also a general requirement. The new rules also require applicants claiming colour as a distinctive feature of a trade mark to specify the colour(s) claimed by reference to an internationally recognised colour identification system (such as the Pantone colour system).
For more information click here.Source: www.ogier.com Aug 25, 2023 (Newsletter Issue 7/23)Trade Marks Registry Work Manual Chapters UpdatedTrade Marks Registry Work Manual Chapters have been updated in August 2023.
The Chapters on "Classification", “Movement marks and holograms” and “Sound marks” of the Trade Marks Registry Work Manual have been updated as per the Log of Changes made to chapters in 2023.
The log of changes can be accessed here.Source: www.ipd.gov.hk Aug 23, 2023 (Newsletter Issue 7/23)
Industrial Property Act Amended
Law No. 102 of July 24, 2023, amending the Industrial Property Code, Legislative Decree No. 30 of February 10, 2005, was published in the Official Gazette, General Series, No. 184 of August 8, 2023. The law took effect on August 23, 2023.
The amendment has to two fundamental objectives: 1) the strengthening of the competitiveness of the country's system and the protection of industrial property; and 2) the administrative simplification and digitalization of procedures.
Most important steps:
- Protection of geographical indications and designations of origin strenthened.
Trademark registrations that include words, designs or elements that cause detriment to the Italian national image or reputation can be revoked.
- So-called Professor privilege overturned.
The ownership of inventions made by research personnel in the university environment is attributed in the first instance to the structure to which they belong and, only in case of inertia of the latter, to the researcher.
- Deadline for payment of patent filing fees prolonged.
Application filing fees may be payed within one month after the filing date with the filing date being kept.
- Obligation to send paper documents to IPO abolished.
A new provision allows the use of the e-filing system once the digital identity of the user is certified.
- Acceleration of procedures and decisions.
The term between the notification of the invalidity or revocation action to the parties and the hearing at the Board of Appeals has been reduced from 40 to 30 days.
Source: www.uibm.mise.gov.it
Aug 04, 2023 (Newsletter Issue 7/23)Industrial Property Act AmendedAmendments to the Slovenian Industrial Property Act entered into force on July 27, 2023, aiming to harmonize national legislation with the EU and international law, simplify procedures and make them more efficient and affordable.
Procedures for revocation and declaration of invalidity will be initiated before the Slovenian Intellectual Property Office (SIPO). They were previously held before the District Court in Ljubljana. The rules for administrative procedure in accordance with the Industrial Property Act and the General Administrative Procedure Act apply. The official fee for revocation or declaration of invalidity is EUR 500. Evidence in a foreign language must be translated into Slovenian.
Actions against the SIPO’s decisions may be filed before the Administrative Court of Slovenia. The court fee for an action before the Administrative Court is EUR 148. Pending revocation and declaration of invalidity procedures initiated before the amendments entered into force will be resolved in accordance with the previous law.
The District Court remains competent for deciding on trademark revocation or invalidation in case of a counterclaim in an infringement action. In such cases the Court must inform the SIPO that such a procedure was initiated before the Court.
A representative before the courts may be an attorney at law or a person that has passed the state bar examination, whereas the SIPO representatives do not need to be attorneys at law but patent or trademark attorneys who are registered and on the SIPO’s list of IP attorneys.
The option to require evidence of use in an opposition procedure based on an earlier right vulnerable to non-use was only introduced in Slovenia with the amendments of the Industrial Property Act in 2020.
With respect to proving the reputation of EU trademarks, Article 44 (1) (c) now expressly stipulates that for EU trademarks, reputation in the EU should be proven (not only in Slovenia).
It is no longer expressly required that Powers of Attorney (POAs) are given to representatives in written form, which could be interpreted that scanned copies of POAs are acceptable and originals no longer required. In cases where there is more than one representative for a right, if not indicated otherwise, the SIPO will deliver the documents to the most recently registered representative.
Furthermore, a uniform attorney’s tariff was introduced, which should be accepted by the Association of Slovenian Intellectual Property Attorneys (ASIPA) within one year from the amendments’ entry into force.
For more information click here.Source: www.petosevic.com Aug 03, 2023 (Newsletter Issue 7/23)
Official Fees Amended
The Kazakh Intellectual Property Office introduced amendments to certain official fees, which entered into force on July 10, 2023.
The following fees have increased by 45%:
The fee for filing a trademark application increased from EUR 132 to EUR 192; the fee for each additional class over three increased from EUR 37 to EUR 54;
The trademark renewal fee increased from EUR 212 to EUR 308; the fee for each additional class over three increased from EUR 37 to EUR 54;
The fee for filing a response to a provisional refusal and for filing an opposition against a pending trademark application increased from EUR 39 to EUR 57;
The fees for conducting all types of trademark searches have increased by up to 40%.
Finally, the fee for registering an assignment agreement or license for all types of IP rights, including patents, utility models, industrial designs and trademarks, has increased from EUR 98 to EUR 119, a 21% increase, while the fee for each additional IP right in the same agreement increased from EUR 20 to EUR 29.
In contrast, plant variety right annuity fees have been reduced by 5% to 15% per annual fee. For instance, the annuity fee for years 1-3 decreased from EUR 24 to EUR 20 and the annuity fee for years 41-45 decreased from EUR 247 to EUR 222.
Source: www.petosevic.com
Aug 03, 2023 (Newsletter Issue 7/23)
Competition Law Amended Excluding IP-Related Provisions
Amendments to Uzbek competition law will enter into force on October 4, 2023. They aim at reducing anti-competitive and unfair practices. However, provisions for the protection of IP rights have been entirely excluded.
The previous version of the law included the provisions which prohibited:
- Sale of goods with illegally used IP rights including the illegal use of a designation identical or confusingly similar to a trademark or trade name by placing it on goods, labels or packaging, or otherwise using it in relation to goods that are sold or put into circulation, as well as by using it in a domain name;
- Misleading consumers with products that resemble the original products of other companies by imitating their design, shape, names, labels, packaging, colors, trademarks, promotional materials or other elements;
- Registration of IP rights in bad faith.
The new competent body, the Competition and Consumer Protection Committee (CPCC) will have no authority to review and decide on IP-related cases. It appears that now there are no effective statutory mechanisms or governmental institutions to rely on when dealing with infringements based on unfair competition grounds.
The amendments are not in line with the Paris Convention, according to which every member of the Union is bound to ensure effective protection against unfair competition, and acts that create confusion as to the goods or the industrial or commercial activities of a competitor are to be prohibited.
Facts of infringement may still be based on the grounds of misleading the public as to the nature, the manufacturing process, the characteristics, the purpose or the quantity of goods (Article 10bis (3) (iii) of the Paris Convention). Conducting public surveys could be helpful in confirming confusing similarity between counterfeit and original products. In this case, IP owners would not be able to base their claims against infringers on the IP rights they own in Uzbekistan, but rather on the actual evidence that infringers are misleading local consumers.
However, Uzbekistan intends to accede to the World Trade Organization (WTO) and will hence have to align its legislation with all of the WTO’s agreements, including the Paris Convention. In accordance with the recent President’s Decree No.108 dated July 6, 2023, a new resolution aimed specifically at determining unfair competition acts will be adopted and used as a guide when dealing with such cases. Once this bylaw is adopted, it might be used to protect the interests of IPR owners in Uzbekistan.
Source: www.petosevic.com
Aug 03, 2023 (Newsletter Issue 7/23)
Accession to Geneva Act of the Lisbon Agreement
On August 2, 2023, the government of the Democratic Republic of São Tomé and Príncipe deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin (AOs) and Geographical Indications (GIs), which will enter into force on November 2, 2023.
Source: www.wipo.int
Aug 01, 2023 (Newsletter Issue 7/23)SMEs Can Recuperate 75% of their Application Fees for TMs and DesignsSmall and medium enterprises can recuperate 75% of their Benelux trademark or design application fee. The SME voucher is available for all companies established in the EU that meet the definition of an SME as determined by the European Commission.
Both basic costs and additional costs (costs for extra classes, for example) qualify for this partial reimbursement:
For an application for a Benelux trademark, that is a minimum of 183 euros (75% of the basic fee of 244 euros).
For an application for a Benelux design, that is a minimum of 112.50 euros (75% % of the basic fee of 150 euros).
For more information, please click here.Source: www.boip.int Aug 01, 2023 (Newsletter Issue 7/23)Update to Trade Mark Practice GuidelinesOn July 11, the Intellectual Property Office of New Zealand (IPONZ) has updated its practice guidelines to clarify the requirements for colour trade mark applications, particularly the requirement for written descriptions of colour marks.
For more information click here.
Source: www.iponz.govt.nz Jul 31, 2023 (Newsletter Issue 7/23)Evidentiary Burden for Extension of Time LoweredEffective as of July 31, 2023, the Trade Marks Office’s interpretation of the ‘prompt and diligent’ grounds for extension of time (EOT) for filing evidence in opposition proceedings has been broadened.
Regulations 5.15(2)(a), 9.18(2)(a), 17A.34K(2)(a) and 17A.48T(2)(a) of the Trade Marks Regulations 1995 (Cth) provide a basis for EOT to a party who can show that despite making all reasonable efforts to comply with the evidence filing date, and despite acting promptly and diligently, they have been unable to meet the deadline. The office has historically interpreted these provisions very strictly.
This change in interpretation is to recognise that while the provision is strict and requires parties to demonstrate reasonableness, promptness, and diligence, it doesn't impose a standard of perfection and permits remedy in certain situations that occasionally arise in preparing evidence. What's required of parties is that they can demonstrate a reasonable plan was executed well, with no significant unexplained delays. Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.
This is expected to significantly lower the evidentiary burden on parties seeking an EOT, and to permit EOT in certain situations that may not have been granted in the past. This would include:
- Mere slips
- Errors in recording follow up dates
- Missing pages
- Unsigned declarations
- Technical errors encountered when submitting evidence
- Other genuine errors that are causative of a failure to file when they are in the context of a reasonable plan for the preparation of evidence otherwise executed promptly and diligently.
As always, a party must seek an EOT as soon as practicable after discovering the error.
For more information, please click here.Source: www.ipaustralia.gov.au Jul 11, 2023 (Newsletter Issue 6/23)
GCC TM Law in Force
Qatar has officially adopted the Gulf Cooperation Council Trademark Law which was published in the Official Gazette No. 09 dated 09 July 2023. It enters into force on August 10, 2023.
Key changes:
- A significant increase in the official fees, which will also be applied retroactively on pending Trademark cases that are currently maturing to registration.
- Sound marks and smell marks will be registrable.
- The publication period has changed from 4 Months to 60 days.
- The publication and registration fees are to be settled within 30 days from the date of receiving the respective notification of the trademarks office.
- multiclass trademark applications will be allowed based on the approval of the respective registry.
The GCC TM Law replaces the local trademark laws of the GCC member states and creates unified implementing regulations for trademark prosecution and enforcement in each of the GCC member states. However, it does not offer a unitary registration system. The Trademark Offices of each GCC country will remain as the receiving office and will register trademarks on a national basis. Registering a trademark across the six GCC countries will still require filing six separate national trademark applications.
Source: www.agip.com, www.jahcoip.com
Jul 07, 2023 (Newsletter Issue 6/23)
Official Searches Available
As of January 2023, it became possible to conduct official searches with the Kuwaiti trademark’s office subject to payment of the official fees and obtain the official search report on the availability of the trademark or not along with the complete particulars of any allocated similar or identical trademark.
Source: www.jahcoip.com
Jul 01, 2023 (Newsletter Issue 7/23)
Official TM Similarity Search Abolished
The patent law amendment also brings about changes in the trademark area: With the entry into force of the patent law amendment, the Austrian Patent Office ceases to conduct official similarity searches as part of the application procedure for applications filed on or after June 1, 2023.
While the average processing time of a fast-track trademark application in the 1st quarter of 2023 was less than 4 working days, the mentioned step is expected to accelerate the procedure by at least 20% for applications on paper or via a standard online application.
Source: www.patentamt.at
Jul 01, 2023 (Newsletter Issue 7/23)IPO Relocated and New Regulation on Fees for IPOs Services On 1 July 2023, a new Regulation on Fees for the Intellectual Property Office's services entered into force. Expense items remain for the most part unchanged, however Article 1 on reimbursement of fees and Article 6 on Supplementary Protection have been altered.
There is now a provision for the refund of fees paid in excess, as well as annual fees that fall due under proceedings concerning the re-establishment of rights, if such request is finally rejected. Also, in accordance with the amendments to the Patent Act No 17/1991 with Act No 57/2021, a handling fee for a notification of an exemption from Supplementary Protection has been added.
The Regulation 536/2023 is available here.
Furthermore, the Icelandic Intellectual Property Office has moved its offices to Katrínartún 4, Reykjavik.Source: www.hugverk.is Jun 28, 2023 (Newsletter Issue 6/23)
Partial Revision of Guidelines
The IPI has partially revised its Trade Mark Guidelines ('International trade mark registration', 'Substantive trade mark examination’, ‘Opposition proceedings’ and ‘Cancellation proceedings due to non-use’) as well as the guidelines for the substantive examination of national patent applications.
These guidelines came into force on 1 July 2023 and apply to all pending procedures from that date. They can be consulted on the IPI’s website (in German, French and Italian).
Source: www.ige.ch
Jun 22, 2023 (Newsletter Issue 6/23)
Official Fees to Increase
As of January 1st, 2024, the Canadian Intellectual Property Office (CIPO) is increasing most of its fees by approximately 25%. The regulations detailing the adjustment of patent, trademark, copyright and industrial design fees were published in the Canadian Gazette, Part II on June 21, 2023.
CIPO does not receive annual funding for its operations from the Government of Canada, but instead is fully funded through the revenue it generates from fees paid by applicants. With these fee adjustments, CIPO wants to address its current structural deficit.
For trademark owners, it is worthwhile to file their trademark application or to renew their registration in 2023. For example, the fees for filing a trademark application will increase from $347.35 CA to $458.00 CA for the first class and from $105.26 CA to $139.00 CA per additional class. The fees for the renewal of a trademark registration will increase from $421.02 CA to $555.00 CA for the first class and from $131.58 CA to $173.00 CA per additional class.
Source: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks/fees-trademarks
Jun 21, 2023 (Newsletter Issue 6/23)
Changes to Organisational Structure
IP Australia makes some changes to organisational structure to ensure they are well positioned to meet their key objectives and improve service delivery.
This includes streamlining management positions to reduce hierarchy, improve decision-making, and provide quality and timely IP Rights in consistance with the Government's Reform Program for the Australian Public Service.
From 1 July 2023, key changes include a reduction (from two) to one Deputy Director General, Margaret Tregurtha.
Importantly, the statutory roles created under IP legislation continue to report directly to me as Director General, Michael Schwager.
Those Statutory roles will be reassigned from 1 July 2023 as follows:
• Commissioner of Patents and General Manager, Patents Examination Group - Andrew Wilkinson
• Registrar of Trade Marks and Designs and General Manager, Trade Marks and Designs Group – Kelly Sims
• Registrar of Plant Breeder’s Rights and General Manager, Patents Oppositions, Business Improvement and Plant Breeder’s Rights Group – Rob Crispe
There are no changes to the way clients engage with IP Australia, nor to any process or policy.
Source: www.ipaustralia.gov.au
Jun 16, 2023 (Newsletter Issue 6/23)New Online ServicesThe Swiss Federal Institute of Intellectual Property (IPI) expands its online services to simplify the IP rights management for intellectual property owners and their representatives.
Here's an overview of the new online services.
- New databases for patents, designs and supplementary protection certificates that are easy to search through
- Request register changes online
- Receive communications electronically
- Pay fees online with a current account
- Overview of requests and current account transactions in the user accounts
For more information regarding the new online services, click here.Source: www.ige.ch Jun 14, 2023 (Newsletter Issue 6/23)
New Electronic Service
An electronic portal of the Appeals Board of the Intellectual Property Agency adjudicator of Industrial Property Disputes was established.
The aim of the project is to improve management in the field of protection of industrial property objects, apply to the Appeals Board, digitalize, speed up and increase the efficiency of clerical work by applicants, parties to the case or members of the Appeals Board in the documentation process.
It should be noted that this electronic service was developed at the expense of the internal resources of the Agency.
Source: www.copat.gov.az
Jun 12, 2023 (Newsletter Issue 6/23)
Partial Revocation of TMs Possible
As of June 12, 2023, it is possible to request the partial revocation of trademark registrations due to lack of use. This is a significant change in the current practice, causing a great impact on trademark registration strategies.
In 2018, Law 27,444 introduced several changes to the Law on Trademarks and Trade Names. A noteworthy amendment was the incorporation of the possibility of requesting the partial revocation of trademark registrations, ex officio or upon request of third parties; however, a 5-year grace period was established to start filing these requests. This period has ended now.
The partial revocation of a trademark registration applies to those products or services protected by the registration for which the trademark has not been used within a period of 5 years prior to the filing of the revocation request. The revocation does not apply if the trademark was used to identify related or similar products or services, even those included in other classes, or if it is part of a trade name related to the products or services protected by the registration. The revocation request may be filed against both new trademark registrations and renewals.
Previously, the use of a mark to identify any product or service, even those included in other unrelated classes, would suffice to comply with the use requirement and avoid a revocation action. This allowed trademark holders to obtain the registration of defense trademarks in classes without any relation to the products or services for which the trademark was used. This practice hindered the registration of marks that could peacefully coexist in the market without causing any risk of confusion amongst consumers. The partial revocation of trademark registrations is a new and powerful tool that will avoid these obstacles.
Source: www.ungria.com
May 29, 2023 (Newsletter Issue 6/23)
TMO Resumes Normal Operations
The Libyan Trademark Office resumed its normal operations on 28 May 2023. It should be noted that since November 2022, the TMO has been operating at a limited capacity by processing only IP cases related to Libyan individuals and companies whilst freezing all IP services related to foreign applicants.
Source: www.jahcoip.com
May 29, 2023 (Newsletter Issue 6/23)
Fees Reduction for Several IP Services
The Ministry of Commerce, Industry and Investment Promotion has issued Ministerial Resolution No. 292/2023 that cancels the fees of 20 government services provided by the Ministry for companies and individuals.
Amongst the fees waived are:
1) Publication with Ministry of Commerce of accepted Trademark application, renewal, license and assignment recordal applications.
2) Obtaining a copy of the patent after grant.
3) Checking the records of Trademark only one time for finding and obtaining its particulars to establish the latest status.
Source: www.jahcoip.com
May 12, 2023 (Newsletter Issue 5/23)Accelerated Examination AvailableThe partial draft amendment to the Taiwan Trademark Act has passed the third reading on May 9, 2023 by the Legislative Yuan1. Several provisions favorable to trademark holders are introduced in the amendment, which are summarized as follows:
Introducing Accelerated Examination for Applications for Trademark Registration
The new Paragraph 8, Article 19 of the Trademark Act, introduces accelerated examination for trademark applications if applicants need to quickly obtain the right (e.g., when there is infringement litigation involved or when products have launched). Applicants may submit facts and reasons for acceleration, pay a NTD 6,000 fee, and have the examination period shortened to 2 months.
Introducing Trademark Agent Management System
The introduction of a system for managing trademark agents allows those equipped with professional knowledge of trademarks and who have completed registration and training to handle trademark matters as trademark agents.
Stipulating Circumstances that are Nominative Fair Use and Not Infringement
“Using others’ trademark to refer to others’ goods or services, in a manner that is honest and conforms to business transaction practices, to indicate the purpose of one’s own goods or services” is considered “nominative fair use” and not infringement (Paragraph 1, Article 36).
For instance, a mobile phone repair shop using a sign that shows the trademarks of various mobile phone brands to indicate the services it provides does not constitute trademark infringement.
Simplifying Customs Detention Process
The amended Paragraph 2, Article 75 of the Trademark Act obviates the need for trademark holders to identify the infringement at customs in person when an article is deemed likely to infringe the trademark holder’s right. As long as the trademark holder has completed the registration for “advice protection of trademark right” at the Taiwan Customs, once an article suspected of infringement is found, the trademark holder may then determine whether there is infringement based on the photos of the article on the customs’ online platform.
More Amendments to Come
In addition, the IPO proposed another set of partial draft amendment to the Taiwan Trademark Act stipulating matters regarding the examination of opposition and invalidation and processes of remedies thereof, trademark exhaustion, and requirements for registering trademarks with functionality, etc.
Read more here.
Source: www.tipo.gov May 01, 2023 (Newsletter Issue 5/23)
Accession to Singapore Treaty on Trademarks
On 24 April 2023, the Government of Montenegro acceded to the Singapore Treaty on the Law of Trademarks by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.
The objective of the Singapore Treaty is to create a modern and dynamic international framework for the harmonization of administrative trademark registration procedures.
The said Treaty will enter into force, with respect to Montenegro, on July 24, 2023.
Source: https://www.wipo.int
May 01, 2023 (Newsletter Issue 5/23)
Accession to Geneva Act of the Lisbon Agreement
On April 6, 2023, the Government of Tunisia deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act).
The Geneva Act of the Lisbon Agreement helps producers of quality products, linked to their geopgraphic origin, to protect the distinctive designations of their products in multiple jurisdictions, either as appellations of origin or geographical indications, through a single application filed with WIPO, and the payment of one set of fees.
It will enter into force with respect of the Republic of Tunisia on 6 July 2023.
Source: www.wipo.int
May 01, 2023 (Newsletter Issue 5/23)
Official Trademark Fees to be Reduced
From 1 July 2023, it will cost 450 Swiss francs to file a trade mark with the IPI instead of the current 550 Swiss francs. In addition, the fee for protecting an international trade mark in Switzerland for three classes of goods will be reduced by 50 Swiss francs. The IPI will also offer an ‘e-discount' of 100 Swiss francs from this date onwards for applications submitted electronically. A trade mark is protected for ten years from its filing date. After that, protection can be renewed indefinitely for ten years at a time. With effect from 1 July 2024, the renewal fee will be decreased from 700 to 550 Swiss francs.
Source: https://www.ejpd.admin.ch/ejpd/en/home/latest-news/mm.msg-id-92238.html
May 01, 2023 (Newsletter Issue 5/23)
Patent Legislation Amended
On April 7, 2023, a new edition of the patent legislation began to operate in Kyrgyzstan.
In particular, some of the rules were brought into line with the Protocol on Industrial Designs to the Eurasian Patent Convention.
In the previous version of the Law, the term of protection of industrial designs was 10 years with the possibility of extending the term of legal protection for another 5 years. In the new version the term of protection is increased to 25 years.
At the same time, the list of essential features has been excluded from the list of documents for filing an application for a patent for an industrial design.
Also, the term of legal protection of the utility model is increased to 10 years, while in the previous edition, it was 5 years with the right to extend for 3 years.
Also, the new version of the Law excludes the possibility of issuing a patent for an invention under the responsibility of the applicant. A patent “under the responsibility of the applicant” was previously issued in a shorter time. The search was carried out only for local novelty (the territory of the member states of the Eurasian Patent Convention). In this case, only the applicant bears the entire burden of responsibility for subsequent possible disputes. On the other hand, this approach created some legal uncertainty and also affected the quality of granted patents. These shortcomings are eliminated in the new edition of the Law.
The new version of the Law also provides the applicant with the opportunity to use the system of electronic filing of applications for the issuance of a national patent for inventions, utility models, and industrial designs.
Source: https://craneip.com/kyrgyzstan-amends-patent-legislation/
May 01, 2023 (Newsletter Issue 5/23)
Restoration of Abandoned Applications & Oppositions
On April 21, 2023, the Indian Controller General of Patent, Design and Trade Marks (office) issued a public notice to announce the withdrawal of two notices issued on 6 February 2023 and another two notices issued on 27 March 2023, which called for a mass abandonment of pending trademark applications that did not meet the office’s specified deadlines.
This was done to comply with a decision of the High Court of Delhi, India, from April 13, 2023.
Source: https://ipindia.gov.in/writereaddata/Portal/News/888_1_Public_Notice_dated_-21-04-2023.pdf
May 01, 2023 (Newsletter Issue 5/23)
Partial Rejection and Re-Examination System Effective
On February 4, 2023, the amendments to the Korean Trademark Act promulgated on February 3, 2022 finally took effect.
Partial rejections and a re-examination are now possible. These amendments are expected to make the registration process more convenient for applicants and to enhance their chances of properly securing their rights.
New Partial Rejection System
Prior to the amendment, if any designated goods of an application were preliminarily rejected by the Korean Intellectual Property Office (KIPO), the applicant was required to overcome each and every rejection ground, or else KIPO would issue a final rejection of the entire application, even if not all of the designated goods were originally rejected. The only ways to get such non-rejected goods allowed were either to appeal to the Intellectual Property Trial and Appeal Board (IPTAB) to limit the application, or to file a new application designating only the non-rejected goods.
Under the amended Trademark Act, however, KIPO will issue a final rejection only as to the specific goods that have been rejected, such that the remaining goods can simply be registered by the applicant without need for further proceedings.
Establishment of a Re-Examination System
Under the newly established re-examination system, where KIPO issues a final rejection, if the rejection grounds can be overcome simply by amending the designated goods, the applicant is now permitted to submit such an amendment together with a request for re-examination to KIPO, instead of having to go through a trial proceeding at the IPTAB.
A request for re-examination may be filed before the deadline to appeal the final rejection to the IPTAB (i.e., within 3 months from the date of receipt of the Notice of Final Rejection), and if the re-examination request is filed, the final rejection will be deemed revoked. A re-examination request may only be submitted once per application, and no re-examination may be requested once an IPTAB appeal has been filed. In addition, this system does not apply to applications filed under the Madrid Protocol.
Source: https://www.ip.kimchang.com/
May 01, 2023
Official Fees Raised
From May 1, 2023, the size of the basic calculation value used to calculate the number of state fees will increase in Uzbekistan, including for actions with objects of intellectual property.
The size of the basic estimated value increases by 10% (from 300,000 to 330,000 Uzbekistani sum). Accordingly, all fees for filing applications, registration, and other actions with trademarks, patents, and industrial designs in Uzbekistan increase by the same amount.
Source: www.craneip.com
Mar 23, 2023 (Newsletter Issue 4/23)Trademark Law AmendedThe amending Law published in the Montenegrin Official Gazette No. 44/2012, 18/2014, 40/2014, 2/2017 serves to harmonize the national trademark legislation with Directive (EU) 2015/2436. It was published in the Montenegrin Official Gazette No. 3/2023 on 10 January 2023 and entered into force on 18 January 2023.
Some of the amendments are the following:
- removal of the graphical representation requirement of a registered trademark;
- expansion of the list of absolute reasons for refusal and other relative grounds of refusal, i.e., invalidation of a trademark, in the part that refers to the protection of traditional expressions for wines, guaranteed traditional specialties and plant varieties;
- expansion of the scope of rights held by a trademark holder in relation to use of its right, in relation to goods in transit and preparatory actions related to the use of packaging or other means;
- more detailed calculation of terms for proving the use of international trademarks in opposition, invalidation or cancellation proceedings;
- changes in the procedure related to objections filed by third parties and oppositions to trademark registration before the competent authority;
- changes in the proceedings for invalidation/cancellation of a trademark, as well as a change of the competent authority before which the said procedures will be conducted, from the court to the competent administrative body;
For a list on amendments and more information, please click hereSource: www.zmp.eu Mar 23, 2023 (Newsletter Issue 4/23)
UK's Ratification of Vienna Agreement Extended to Isle of Man
On 1 March 2023, WIPO notified the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declaration:
The Government of the United Kingdom of Great Britain and Northern Ireland extends the application of United Kingdom's ratification of the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985 ("Vienna Agreement") to the territory of the Isle of Man, for whose international relations the United Kingdom of Great Britain and Northern Ireland is responsible.
The United Kingdom of Great Britain and Northern Ireland also extends to the territory of the Isle of Man its declaration made under the provisions of Article 4(5) of the Agreement that it does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewals of marks.
The said declaration entered into force, with respect to the territory of the Isle of Man, on 1 March 2023.
Source: www.wipo.int
Mar 23, 2023 (Newsletter Issue 4/23)
Withdrawal of Notification on Division of International Registrations
As of 1 March 2023, the Office of Norway has withdrawn the notification made under Rule 40(6) of the Regulations of the Madrid Protocol Concerning the International Registration of Marks.
Consequently, as from that date, the Office of Norway may present to WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Regulations.
Source: www.wipo.int
Mar 23, 2023 (Newsletter Issue 4/23)Long-Awaited Trademark Law in Force SoonOn 10 March 2023, the State Administrative Council issued Notice No. 80/2023 setting 1 April 2023 as the effective date of the long-awaited Trademark Law.
The IP registration system is to be introduced in four phases:
- First phase: The first soft opening of the registration system and online filing of trademarks registered under the Myanmar Registration Act, 1908 started in 2020.
- Second phase: The opening of the registration system for payment of fee and appointment of the representative (Form TM-2) expected to start at the end of May or early June 2023.
- Third phase: The grand opening of the registration system commencing one month after the second phase. Pursuantly, the old and new marks will be registrable on an ongoing basis. The time from the second phase to the third phase will be reconsidered in accordance with actual ground operations.
- Fourth phase: Establishment of the registry for Myanmar Copy Right Law and Industrial Design Law, tentatively in 2024.
The expected trademark filing will be MMK 150,000 and registration fees MMK 150,000 per class of goods and services.
Foreign trademark owners residing outside Myanmar must appoint a certified trademark representative by having the TM-2 form notarized. Foreign and Myanmar resident trademark owners must also complete and submit the TM-2 form. However, the TM-2 form does not need to be notarized.
For more information, please click hereSource: www.dfdl.com Mar 23, 2023 (Newsletter Issue 4/23)Japan-Taiwan Concordance List of Similar Group Codes PublishedThe Japan Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to the Nice Classification, 12th edition, version 2023 (NCL12-2023).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
To access the concordance list, please click hereSource: www.jpo.go.jp Mar 23, 2023 (Newsletter Issue 4/23)Japan-Taiwan Concordance List of Similar Group Codes PublishedThe Japan Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to the Nice Classification, 12th edition, version 2023 (NCL12-2023).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
To access the concordance list, please click hereSource: www.jpo.go.jp Mar 23, 2023 (Newsletter Issue 4/23)
Accession to Geneva Act of Hague Agreement
On 13 February 2023, the Director General of WIPO notified the deposit by the Government of the Federative Republic of Brazil of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force, with respect to the Federative Republic of Brazil, on 1 August 2023.
Source: www.wipo.int
Mar 23, 2023 (Newsletter Issue 4/23)Administrative Procedures in Trademark Protection IntroducedThe Bureau of Intellectual Property Office of Economic Affairs (Amt für Volkswirtschaft) has introduced new administrative procedures in trademark protection following the implementation of EU Directive 2015/2436.
As of 1 January 2023, interested parties may now initiate opposition proceedings against the registration of a trademark and proceedings for revocation or declaration of invalidity before the Liechtenstein Office of Intellectual Property.
The Trademark Protection Act (MSchG, LGBl. 1997 No. 60), the Trademark Protection Ordinance (MSchV, LGBl. 1997 No. 77) and the Ordinance on the Collection of Fees under the Trademark Protection Act (MSchG, LGBl. 1997 No. 78) had to be amended.
For further information on the consolidated legislation, please check at www.gesetze.li
www.llv.li; Patentbüro Paul Rosenich AG, Liechtenstein Mar 01, 2023Changes in Regulations for TrademarksFrom 1 March 2023, amendments to the Trademarks Act and the Fee Regulations came into force. The changes are based on the EU's trademark directive, 2015/2436. Norway acceded to the Singapore Treaty at the same time.
- Changes in the regulations on fees - from three classes to one
- Easier registration of non-traditional trademarks
- TMs applied for in black & white or shades of grey no longer receive protection for all colours
- Changes in rules on the renewal of trademarks
For more information click here.Source: www.patentstyret.no Feb 16, 2023 (Newsletter Issue 3/23)New Trademark Law DraftedOn 9 December 2022, Bermuda's Minister of Tourism and Cabinet Office issued a ministerial statement that a new trademark law has been drafted to modernize the current law, which was enacted almost 50 years ago. The new law is modeled on UK’s trademark law and as such, the UK Intellectual Property Office will be invited to review the draft law in due course. The UK will also be asked to extend a number of international intellectual property treaties to Bermuda.
Among the proposed amendments is the accession to the Madrid Protocol to allow international registrations. Furthermore, the renewal periods for trademark registrations will be reduced from 14 to 10 years. In addition, the current Register divided into Parts A and B will likely be merged into a single register.
For further information, please contact the contributor here
Source: Ogier, Cayman Islands Feb 16, 2023 (Newsletter Issue 3/23)
Accession to the Madrid System and the Hague System
On 6 February 2023, Mauritius deposited its instrument with WIPO of accession to the Madrid Protocol. It also deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement.
The Madrid Protocol and the 1999 Act will enter into force in Mauritius on 6 May 2023.
Source: www.wipo.int
Feb 16, 2023 (Newsletter Issue 3/23)Review of Notorious Markets for Counterfeiting and Piracy ReleasedOn 31 January 2023, the Office of the United States Trade Representative (USTR) released the findings of its 2022 Review of Notorious Markets for Counterfeiting and Piracy (NML). The NML highlights online and physical markets that reportedly engage in or facilitate substantial trademark counterfeiting or copyright piracy.
The NML examines the impact of online piracy on U.S. workers. It also identifies 39 online markets and 33 physical markets that are reported to engage in or facilitate substantial trademark counterfeiting or copyright piracy. For example, 6 Chinese online markets including AliExpress, Baidu Wangpan, DHgate, Pinduoduo, Taobao and the WeChat ecosystem have been named.
The complete list can be seen hereSource: www.ustr.gov Feb 16, 2023 (Newsletter Issue 3/23)Trademark Act AmendedOn 1 January 2023, Hungarian Act LV amending several industrial property laws, including the Trademark Act, entered into force. Act LV aims to fine-tune and amend certain aspects of various procedures before the Hungarian Intellectual Property Office (HIPO). The amendments are the result of the HIPO’s practical experience and are primarily aimed to harmonize IP laws with Hungarian procedural legislation, including the Law on Civil Procedure and the Law on General Administrative Procedure.
Some of the main amendments are outlined below:
Deadline Extensions: Deadline extensions before the HIPO have been limited to a minimum of one month and a maximum of three months. Special six-month extension may be granted only in particularly justified cases.
Procedure Suspension: Suspension of adversary trademark proceedings in which several parties are involved can only be granted at the joint request of the parties.
Opposition Proceedings: Licensees who are not recorded in the trademark register are now allowed to file an opposition against a trademark application.
Cancellation Actions: Licensees of an earlier right and unregistered users of an earlier geographical indication can now file cancellation actions based on relative grounds for refusal. Further, the possibility to postpone the hearing in the cancellation proceedings and to accelerate the cancellation actions can be requested.
For more information, please click hereSource: www.petosevic.com Feb 16, 2023 (Newsletter Issue 3/23)Draft Interpretation of Handling Criminal Cases of Intellectual Property InfringementOn 18 January 2023, the Supreme People’s Court and the Supreme People’s Procuratorate of China released a draft on "Interpretation on Several Issues Concerning the Application of Law in Handling Criminal Cases of Intellectual Property Rights Infringement (Draft for comments)".
The interpretation mainly sets out criteria for determining criminal prosecution, e.g., in cases of serious circumstances of trademark infringement. The public is invited to submit comments until 5 March 2023.
For more information, please click hereSource: www.court.gov.cn; www.chinaiplawupdate.com Feb 03, 2023Minor Changes to the TM RegulationChanges to Regulation No. 850/2020 on the applications for and registration of trademarks, collective marks and guarantee and quality marks entered into force on 30 January 2023, with Regulation No. 59/2023. The changes mainly concern minor rectifications in relation to references or wording, aiming at improved clarity.
The main changes can be seen hereSource: https://www.hugverk.is/en/newsroom/news/law-and-regulations/changes-to-the-regulation-on-trademarks Jan 26, 2023 (Newsletter Issue 2/23)Official IP Fees IncreasedOn 1 January 2023, the Argentine Trademark Office increased industrial property fees by 110%. Another increase is scheduled for 1 March 2023, also amounting to 110%. However, the second increase will not be calculated based on the updated fee, but on the amount applicable until 31 December 2022. These abrupt and subsequent trademark fee updates are a result of no increases having been made since July 2019.
From 1 January 2023, the official trademark application fee is ARS 4,641 per class. There are no special fees for additional classes. The publication fee is already included in the application fee. As of 1 March 2023, this trademark fee will increase by ARS 2,431, bringing the cost of a trademark application to ARS 7,072.
In addition, the Trademark Office has limited class protection to 20 products or services under each class per trademark application. If more than 20 products or services are selected in an application, an additional fee of ARS 25 per product or service will be due.
Source: O'Conor & Power, Argentina; www.berti.com.ar Jan 26, 2023 (Newsletter Issue 2/23)New Procedure for Trademark Applications on Arabic TransliterationOn 22 December 2022, the Iraqi Trademarks Office stipulated that trademark applications filed in Latin script must include the Arabic transliteration of the mark in accordance with Article 5 of the Iraqi Trademark Law No. 64 of 1977 for the protection of the Arabic language.
The new procedure applies to applications currently undergoing examination and new filings made on or after 2 January 2023.
Source: JAH Intellectual Property, Qatar, www.sabaip.com Jan 26, 2023 (Newsletter Issue 2/23)Official IP Fees IncreasedOn 31 December 2022, the Turkish Patent and Trademark Office informed in the Official Gazette about the increase of official fees for trademarks, patents, utility models, and designs. The corresponding official fees entered into force on 1 January 2023.
The new official fee for filing a trademark application is TRY 760 per class. The official fee for registration is TRY 1,960.
Source: JAH Intellectual Property, Qatar Jan 26, 2023 (Newsletter Issue 2/23)Trademark Law Expected to Be Enforced SoonOn 12 January 2023, Myanmar's Intellectual Property Department (IPD) announced that the Trademark Law, which was enacted in 2019, is expected to come into force in March 2023, without giving a specific date. Trademark registrations and procedures for accepting payments are anticipated to begin as soon as the Trademark Law comes into effect.
The grand opening of the Intellectual Property Office is scheduled for 26 April 2023.
For more information, please see here and hereSource: www.tilleke.com; www.rouse.com Jan 26, 2023 (Newsletter Issue 2/23)Draft Amendment to Trademark Law PublishedOn 13 January 2023, the China National Intellectual Property Administration (CNIPA) published the draft amendment to the Trademark Law of the People's Republic of China. This is the fifth revision of the Chinese Trademark Law since 1983. The draft expands the Trademark Law to 10 chapters and 101 articles. Of these, 23 new articles have been added, 6 new articles have been carved out of existing articles, 45 articles have been substantially revised and 27 existing articles have been retained.
Many of the amendments aim to reduce the malicious registration of trademarks and introduce a system to enforce the transfer of maliciously occupied trademarks. In addition, the requirement of good faith in the field of trademarks is to be strengthened. Furthermore, trademark registrants are now required to file statements of use every five years and are subject to random checks.
CNIPA’s notice and the draft can be reviewed here (in Chinese only).
For more information, please see here Source: www.chinaiplawupdate.com Jan 12, 2023 (Newsletter Issue 1/23)Law on GIs of Alcoholic Beverages AdoptedOn 1 December 2022, the Ukrainian Parliament adopted a special law establishing the details of preparation for registration, use and protection of geographical indications for agricultural products, food products, wines, flavored wine products, and spirits.
The adopted law transposes the provisions of Regulation (EU) 2019/787 into Ukrainian legislation. Proper convergence of national legislation in the field of geographical indications of alcoholic beverages and in the field of production of alcoholic beverages with EU standards will be ensured.
For more information, please see hereSource: www.craneip.com Jan 12, 2023 (Newsletter Issue 1/23)Open Conference to Discuss Complaints / Suggestions on IPR IssuesOn 13 December 2022, the Indian Trademark Office, Controller General of Patents, Designs & Trade Marks (CGPDTM) announced in a public notice that it will conduct an open house to discuss complaints and suggestions on IPR issues.
The open house discussion will be a public forum held online via the Webex platform every Friday working day from 4.00 pm to 5.30 pm. All participating practitioners must submit their questions to allow sufficient time for resolution. Practitioners can join the discussion by clicking on the following link here, which remains the same every Friday.
For more information, please see hereSource: www.ipindia.gov.in Jan 12, 2023 (Newsletter Issue 1/23)Online Certificates for Patents and Trademarks The Taiwanese Intellectual Property Office (TIPO) has announced that it will issue online certificates for patents and trademarks from January 2023. The online certificates will be provided in PDF format and can be downloaded by the applicant within six months of notification by TIPO. The certificates are equipped with anti-counterfeiting measures that require verification, digital signatures, and a QR code.
Online certificates are not mandatory. Applicants may choose either an online or a paper certificate. Also, should the applicant require a paper certificate later, those who have opted for an online certificate can request a paper copy.
For more information, please see hereSource: www.tipo.gov.tw Jan 12, 2023 (Newsletter Issue 1/23)Legalization of Documents by Apostille SufficientOn 7 December 2022, the Convention of 5 October 1961 Abolishing the Requirement of Legalization for Foreign Public Documents (1961 Apostille Convention) entered into force in Saudi Arabia, following the deposit of the instrument of accession on 8 April 2022.
The above decision was enacted by Royal Decree No. M/40 and published in the Official Gazette No. 4916 of 7 January 2022. The Saudi authorities have started accepting Apostilled documents for proceedings of patents, trademarks, and designs.
Source: JAH Intellectual Property, Qatar Jan 12, 2023 (Newsletter Issue 1/23)11th Edition of Nice Classification / 10th Edition of Locarno ClassificationThe Trademark Office announced that the 11th Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been adopted in Gaza.
In addition, the 10th edition of the Locarno Classification, the international classification used for the purposes of the registration of industrial designs, has entered into force in Gaza.
Source: JAH Intellectual Property, Qatar; www.shehadehlaw.com
Jan 12, 2023 (Newsletter Issue 1/23)Madrid E-Filing AvailableTrinidad and Tobago has signed up for the Madrid e-Filing service. As of 10 January 2023, trademark holders from Trinidad and Tobago will be able to file their applications for international trademark registrations online, directly via the website of the Trinidad and Tobago Intellectual Property Office (TTIPO) hereSource: www.wipo.int Jan 12, 2023 (Newsletter Issue 1/23)New Administrative Procedure for TM Revocation and InvalidationOn 13 December 2022, Romania amended Law No. 84/1998 on Trademarks and Geographical Indications (GEO 169/2022) by Government Emergency Ordinance No. 169/2022, adopting significant amendments regarding the revocation and invalidation of trademarks.
Interested parties may now file an application for revocation or invalidity before the Romanian State Office for Inventions and Trademarks (OSIM) through an administrative procedure. Previously, the only possible route was through the Bucharest Court, which remains available as an alternative route.
A separate service of OSIM consisting of a three-member committee will handle the revocation and invalidation applications. These applications need to meet formal requirements before they will be transmitted to the defendant, who will be granted 30 days to file a statement of defense. The defendant’s response, if filed, will be transmitted to the plaintiff, who may file a counter-response within 10 days.
The IP Office’s revocation and invalidation decisions may be contested before the Bucharest Court within 30 days of receipt. The decisions of the Bucharest Court can be further appealed before the Bucharest Court of Appeal.
For more information, please check here and hereSource: www.petosevic.com; www.bpv-grigorescu.com Dec 15, 2022 (Newsletter Issue 18/22)
E-Portal for Trademark Procedures at INPI
The French National Institute of Industrial Property (INPI) announced that, as of 11 October 2022, the electronic trademark portal is the sole access point for conducting some procedures related to trademarks. These procedures include the filing, opposition, invalidity, forfeiture, and division of trademarks.
This new interface offers the following advantages:
- Easy online entries with a guided mode for occasional depositors (referral to the most frequent filing methods, information on the criteria for validating the mark)
- Follow-ups real-time procedural steps
- New filters by type of procedure (filing, opposition, nullity, forfeiture, division)
- Facilitated seizures concerning the contested mark and the earlier mark in opposition and invalidity proceedings
The new functionalities will soon extend to registrations in the register and applications for international trademarks, as well as renewals and official copies.
Source: www.inpi.fr
Dec 15, 2022 (Newsletter Issue 18/22)New Administrative Procedure for TM Invalidity and Revocation SoonOn 29 November 2022, the Decree of the Ministry of Economic Development of 19 July 2022, n. 180, was published amending the Italian Industrial Property Code to introduce administrative proceedings for invalidation and revocation of registered trademarks before the Italian Intellectual Property Office (UIBM).
As from 29 December 2022, it will be possible to file an action for invalidity and revocation against registered Italian trademarks before the UIBM through an administrative procedure.
Until now, Italy was one of the few countries in the European Union where no administrative procedure was available for trademark invalidation and revocation actions. Such actions could only be filed before the ordinary courts which remain available as an alternative route.
For more information, please see hereSource: www.studiotorta.com Dec 15, 2022 (Newsletter Issue 18/22)Retained EU Law for Intellectual PropertyOn 15 November 2022, the UK Intellectual Property Office (UKIPO) informs about a list of retained EU law, as defined in section 6(7) of the European Union (Withdrawal) Act 2018. This law relates to intellectual property within the policy remit of the UKIPO.
This list represents the current understanding of the legislation that falls within the definition of the retained EU law (REUL). It may be subject to revision and additions on an ongoing basis as the UKIPO continues to consider legislation in this policy area.
The list excludes any business guidance and other forms of non-legislative instrument that may be affected by the Bill. Not all of this retained EU law is within scope of the sunset provision of the Bill as currently drafted.
For more information and to see the list of retained EU law, please click hereSource: www.gov.uk Dec 15, 2022 (Newsletter Issue 18/22)Accession to Madrid Protocol On 24 November 2022, the Government of Belize deposited its instrument of accession to the Madrid Protocol, containing the following:
- the declaration extending the refusal period to 18 months (Article 5(2)(b) of the Madrid Protocol);
- the declaration indicating that Belize wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Belize requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Belize (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Belize will not present to WIPO requests for the division of an international registration in respect of Belize because its law does not provide for the division of registrations of a mark (Rule 27bis(6) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Belize will not present to WIPO requests for the merger of international registrations resulting from division because the law of Belize does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).
The Madrid Protocol will enter into force in Belize on 24 February 2023.
For more information, please click hereSource: www.wipo.int Dec 15, 2022 (Newsletter Issue 18/22)IPONZ Online Case Management Facility ImprovedThe Intellectual Property Office of New Zealand (IPONZ) informs about a number of improvements to the case management facility.
- IPONZ client records will align with changes to New Zealand Business Number (NZBN) records.
- Trademark application form changes regarding editing the specification of goods and services on a trademark application.
For more information, please click hereSource: www.iponz.govt.nz Dec 15, 2022 (Newsletter Issue 18/22)Provision on Supervision and Administration of TM AgenciesOn 1 November 2022, the China National Intellectual Property Administration (CNIPA) informs on Order No. 63 of the State Administration for Market Regulation promulgated on 27 October 2022 and effective from 1 December 2022.
The provision contains rules for the registration of trademark agents, a code of conduct, supervision, and punishment. Trademark agencies include service organizations registered to engage in trademark agency business in accordance with the law. Trademark agency registration is valid for three years and shall be renewed every three years if they wish to continue the services.
Trademark agents are prohibited from assisting in the registration, transfer, and misuse of bad faith trademarks. A firm or practitioner who engages in such illegal conduct will be penalized and placed on the official credit system. The firm's or practitioner's licence to practice before CNIPA may be suspended or revoked.
For more information, please click here (in Chinese only) Source: www.gov.uk; www.cnipa.gov.cn Dec 01, 2022 (Newsletter Issue 17/22)
Lisbon Becomes Seventh Certified Authenticity
On 26 October 2022, the municipality of Lisbon became the first certified Portuguese “Authenticity” and will join the other six certified Authenticities Thessaloniki, Sofia, Plovdiv, Banska Bystrika, Mykonos, and Madrid.
This EUIPO project aims to raise awareness, among local policymakers, businesses, and the European public, of both the value of IP and the damaging effects of counterfeiting in European cities.
Source: www.euipo.europa.eu
Dec 01, 2022 (Newsletter Issue 17/22)
New PoA Revokes All Prior Authorizations
The Trademark Office in the West Bank issued a new decision about the authorization of trademark agents in the West Bank.
The new decision stipulates that any new General or Limited Power of Attorney (PoA) revokes all prior authorizations. In addition, only one local agent will be responsible for all trademarks in the name of the same owner. However, a Limited Power of Attorney per trademark can be executed without changing the agent on record for the remaining trademarks.
The decision will be implemented starting 1 January 2023.
Source: www.agip.com
Dec 01, 2022 (Newsletter Issue 17/22)
Trademark Office Opens for Limited Operations
The Libyan Ministry of Economy and Trade issued a statement suspending some operations of the Trademark Office as of 1 November 2022.
According to the statement, the operations of the Trademark Office will be limited to the following:
- Trademark applications for Libyan companies and entities only. New trademark applications for all foreign-based companies and individuals will no longer be accepted until further notice.
- Trademark assignment recordation.
- Companies registration.
Source: www.agip.com
Dec 01, 2022 (Newsletter Issue 17/22)IP Office Resumes OperationsThe Ministry of Economy & Trade has announced that the Intellectual Property Office (IPO) will resume its operations for all IP-related matters despite the strike in Lebanon's public sector. The IPO will prioritise the processing of already filed applications, renewals, and recordals with due dates.
As per memo No. 6754/2022 issued by the Ministry, the online filing system for trademark applications will be open every Wednesday. For urgent applications, applicants may submit a request to the IPO to expedite the procedure.
Source: JAH & Co. IP, Qatar and www.agip.com Dec 01, 2022 (Newsletter Issue 17/22)IP Office Participates in WIPO Digital Access ServiceThe Monaco Industrial Property Office of the Business Development Agency notified WIPO, in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS), that it will commence operation as both a Depositing Office and an Accessing Office of WIPO DAS with effect from 1 February 2023.
For more information, please see hereSource: www.wipo.int Nov 17, 2022 (Newsletter Issue 16/22)
Accelerated Examination of Applications Suspended
The Ukrainian IP Office (Ukrpatent) has suspended by order the possibility to file an accelerated examination of applications from 3 October 2022 until the end of the martial law regime in Ukraine.
The decision concerns the possibility for the applicant to pay an additional fee for the accelerated examination of applications for patents for inventions, utility models, industrial designs, and trademarks.
Currently, the registration procedure for trademarks takes 18-24 months.
Source: www.craneip.com
Nov 17, 2022 (Newsletter Issue 16/22)
Law on E-Residency Adopted
On 6 October 2022, the Verkhovna Rada (Ukrainian Parliament) fully adopted Law No. 5270 on electronic residence permits. The law will come into force on 1 April 2023 and will give foreigners a special status allowing them to do business as an e-resident in Ukraine.
The status can be acquired by foreigners who have reached the age of 18, except for those who have the right of permanent residence in Ukraine or are tax residents in Ukraine or stateless persons.
The Ministry of Digital Transformation will determine the list of states whose citizens or residents can acquire e-residency.
Source: www.craneip.com
Nov 17, 2022 (Newsletter Issue 16/22)New Implementing Regulations of Law on Trademarks and Geographical IndicationsOn 7 October 2022, the amendments to the Government Decision No. 1134/2010 on the approval of the Implementing Regulations of the Law on Trademarks and Geographical Indications entered into force. The main amendments are explained below.
Representation Before the Romanian IPO
The Power of Attorney (PoA) should now indicate the scope of the mandate, the date on which the power was granted, and its duration. For trademark applications or procedures that involve registered trademarks, the deadline for the subsequent filing of the PoA is extended to two months from the filing date; previously it was 30 days. In these cases, the new regulations clarify that in the absence of a PoA, the procedures, the proceeding will continue with the applicant or trademark owner.
Representation of Trademarks
Owners now have the possibility to upload audio or video files when filing an application for a sound, motion, hologram, or multimedia trademark.
Distinctiveness Acquired Through Use
Along with the trademark application, the applicant can now file a declaration stating that the trademark acquired distinctiveness through use and support the declaration with evidence.
Requirements for Filing Oppositions
The minimum requirement for filing a formal opposition is that the notice of opposition must include the following details on the prior right relied on: trademark registration number, filing date and, if applicable, registration date and priority date. The PoA can be filed within two months from filing the opposition.
Observation Procedure
The new regulations explicitly state that observations filed by third parties are communicated to the applicant, who is then granted 30 days to file a response during the examination proceedings.
Renewal Procedure
If a renewal request has deficiencies, the trademark owner is granted 30 days to remedy them; previously it was 3 months.
Recording of Assignments, Transfers, Licenses and Other Rights
Certified true copies of supporting documents are now sufficient to prove these changes. Previously, it was necessary to submit original documents or legalized copies.
Changes Concerning the Name/Address of Trademark Owner/Representative
Certified true copies of supporting documents are sufficient to prove these changes. The previous regulations did not contain any provisions concerning such formalities.
For more information, please click here Source: www.petosevic.com Nov 17, 2022 (Newsletter Issue 16/22)Examination Guidelines on Certification Marks/Collective Membership Marks/Collective TrademarkOn 1 October 2022, the amendments of the Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks became effective. The Taiwan Trademark Office (TIPO) informs about the main revisions:
I. The name of the Guidelines changed to “Examination Guidelines on Certification Marks, Collective Membership Marks, and Collective Trademarks” to reflect the sequence of the provisions.
II. A separate chapter on “Geographical Marks” has been added to promote and explain the registration process for the application of geographical certification marks and geographical collective trademarks.
III. Regarding the applicant’s declaration that he/she does not own a business that is involved in the manufacturing and marketing of goods or provision of services of the kind being certified:
i. Clear stipulations forbidding the applicant from registering a trademark in the same scope of the product or services being certified. Otherwise, the applicant is considered in violation of impartiality and the terms of the declaration.
ii. The applicant may, given that he/she fulfills the other requirements, apply to register another trademark outside of the scope of the product or services being certified.
IV. The use of the certified mark should clearly indicate the name of the products or services being certified:
i. When applying for a certification mark, the applicant is permitted to list the overarching category in the name of the product or service being certified (e.g., food, electronics, etc.). However, TIPO requires that the names of products and services abide by NICE classification and be included as an annex in the regulations governing the use of certification marks for ease of publication.
ii. The names of products or services listed for “products or services being certified” should match what is listed in the regulations governing the use of the certified mark and the application and shall not extend beyond the scope listed therein.
V. Examples to illustrate the principles by which to determine what constitutes “obviously improper” – a term used in Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act – with regards to the registration of certification marks, collective membership marks, and collective trademarks.
VI. Additional case studies are added based on supplementing the content for ease of understanding.
For more information, please click here Source: www.tipo.gov.tw Nov 17, 2022 (Newsletter Issue 16/22)New Deadline to Respond to Office Actions for ApplicationsBeginning on 3 December 2022, trademark applicants will have three months (with a possible three-month extension), instead of the current six months, to respond to office actions issued during the examination of a trademark application at the United States Patent and Trademark Office (USPTO). This change only applies to office actions issued on or after December 3.
This new response period will not apply to post-registration office actions on 3 December 2022. Changes to the post-registration response period will be implemented on 7 October 2023.
For more information, please click here Source: www.uspto.gov Nov 17, 2022 (Newsletter Issue 16/22)
IPO Temporarily Suspends Activities
As of 8 November 2022, the Ukrainian Intellectual Property Institute (Ukrpatent) has ceased its activities due to the ongoing institutional reform of the Ukrainian IP system and the process of transferring the IP Office functions to the Ukrainian National Office of Intellectual Property and Innovations (UKRNOIPI).
Electronic and email filings have been suspended for the time being, while paper filings are still accepted. Trademark owners need to be aware of the expected delays.
Source: www.petosevic.com
Oct 20, 2022 (Newsletter Issue 15/22)Virtual Goods Examination Guidelines PublishedThe Korea Intellectual Property Office (KIPO) has adopted the "Virtual Goods Examination Guidelines" that went into effect on 14 July 2022.
The Guidelines indicate that virtual goods are presumptively different from real world goods and virtual goods previously described as downloadable image files. Thus, KIPO will not automatically reject applications for virtual goods based on trademarks for real world goods or trademarks for downloadable image files. Trademark owners might need to consider applying for virtual goods corresponding to their goods/services in the real world as soon as possible before the trademarks are registered by a third party. The key points of the Virtual Goods Examination Guidelines are as follows:
1. Virtual Goods Description Requirements
The broad description of "virtual goods" by itself will not be accepted. Instead, the product type must be specified, for example, "downloadable virtual apparel," "virtual shoes," etc.
2. Classification of Virtual Goods
Virtual goods generally belong to International Classification 9. Further, KIPO has added new Similarity Codes specifically for virtual goods as a way to help distinguish and examine virtual goods.
3. Determination of Similarity
The Virtual Goods Guidelines provide that when comparing virtual goods, they will be presumed similar if the corresponding real world products are similar. However, virtual goods falling within the same Similarity Code may still be found dissimilar depending on the characteristics of the goods. Notably, trademarks for virtual goods will be presumed dissimilar to their real world counterpart goods until a court precedent establishes otherwise.
For more information, please click here Source: www.ip.kimchang.com Oct 20, 2022 (Newsletter Issue 15/22)Measures to Improve eServices of CNIPAOn 5 September 2022, the China National Intellectual Property Administration (CNIPA) issued a notice to further strengthen digitisation of trademark reviews. CNIPA will fully move all rejection appeal cases online. From 1 November 2022, trademark agencies should submit electronic applications through the online trademark rejection appeal system and no longer file paper applications.
Furthermore, on 20 September 2022, CNIPA published a series of measures to further improve electronic services and facilitate trademark registration. These measures include, for example, optimising the file upload function, formulating and issuing guidelines for making requests and responding to Office notices online, as well as organising a series of training courses to educate trademark representatives how to use the system.
For more information, please click here (in Chinese only) Source: www.gov.uk; www.cnipa.gov.cn; www.beijingeastip.com Oct 20, 2022 (Newsletter Issue 15/22)
Trademark Law Amended
Recently, the Intellectual Property Office of DPR Korea has announced the amendments of the Trademark Law according to Decision of the Standing Committee of the Supreme People's Assembly on 30 June 2022. The amendments became effective as of 1 September 2022. Key amendments are the following:
E-filing of trademark application required: According to Article 9, all procedures relating to trademark registration shall be carried out through the e-filing system. Scanned copies of all required documents by e-mail are acceptable.
Deadline for submission of required documents shortened: According to Article 13, the documents required for processing a new trademark application must be filed within 2 months from the filing date (previously, it was 3 months).
Deadline for responding to refusal notice shortened: Per Article 26, where a trademark for registration is refused, and the applicant is dissatisfied with the decision of the Trade Mark Office, the applicant has the possibility to respond to the refusal within 3 months from the date of refusal (previously, it was 6 months).
The decision of re-examination is valid unless a further appeal is filed within 2 months from the date of the announcement. In accordance with Article 27, the applicant who disagrees with the decision of re-examination may initiate legal proceedings before the Committee for the Temporary Trademark Re-examination within 2 months from the date of receipt of the notice.
Deadline for trademark renewal application shortened: Following Article 40, a renewal application for a trademark registration shall be filed within 6 months before the expiration of the 10 years duration (previously, it was 12 months). A grace period of six months may be allowed if the renewal application is not filed within this period.
Use requirement period shortened: According to Article 43, if a registered trademark has not been used by a third party for 3 consecutive years after the date of registration, an application for cancellation of the trademark may be filed. Previously, it was 5 consecutive years.
The IP Office is expected to update the official fee for trademark proceedings soon.
Source: Pyongyang IP Centre, DPR Korea
Oct 20, 2022 (Newsletter Issue 15/22)
Official Fees Amended
The Intellectual Property Office (IPO) has made changes to certain official fees that came into effect on 19 September 2022.
The fee for trademark registration now only covers up to three classes of goods and services and no longer all classes applied for. An extra fee will now be charged for each additional class beyond three.
Furthermore, the IPO amended the fee for recording a change of name/address for registered IP rights by excluding the wording "fee per each change". Owners will now only pay one fee to record all changes to a registered IP right. However, when recording changes to applications, a fee will continue to be charged for each individual change.
Source: www.petosevic.com
Oct 20, 2022 (Newsletter Issue 15/22)IP Decision-Drafting Tool ImplementedThe Bulgarian Patent Office implemented the “Decision Desktop” software on 21 September 2022, becoming the first IP Office to fully implement the new tool integrated into their internal Back Office system.
Decision Desktop aims at facilitating the decision-making process for examiners in order to improve consistency and predictability of decisions made by IP Offices in Europe. It does this by providing IP offices with an interface to create and maintain standard wording and letter templates to assist examiners through increased content automation.
EUIPO invites other IP Offices to participate in this initiative.
For more information, please check hereSource: www.euipo.europa.eu Oct 20, 2022 (Newsletter Issue 15/22)Court of Investment and Commerce EstablishedThe State of Qatar established the Court of Investment and Commerce (CIC) by Royal Decree under Law No. 21 of 2021. The CIC was inaugurated on 10 May 2022. The court handles all matters related to the resolution of disputes and the enforcement of intellectual property rights.
Source: JAH & Co. IP, Qatar Oct 20, 2022 (Newsletter Issue 15/22)12th Edition of Nice Classification Adopted SoonThe United States Patent and Trademark Office (USPTO) issues a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement). The Nice Classification simplifies and streamlines the drafting of goods and services in trademark applications for customers around the world. This rule adds new services to, or deletes existing services from, the class headings for Class 36 and Class 45 to further define the types of services appropriate to the classes.
These changes are included in the Nice Classification, 12th edition, version 2023 (NCL 12-2023), which takes effect on 1 January 2023. It will also be available in the USPTO’s Trademark Next Generation ID Manual on 1 January 2023.
For more information, please click hereSource: www.uspto.gov Oct 06, 2022 (Newsletter Issue 14/22)Further Declarations of Intention to Use for Intl. RegistrationsOn 21 September 2022, WIPO informs that the Office of Cabo Verde has provided information on the requirement to file further declarations of intention to use a mark that is the subject of an international registration designating Cabo Verde.
As indicated in Information Notice No. 22/2022, by designating Cabo Verde, the applicant or holder declares an intention to use the mark in this country, in connection with the goods and services identified in the international application or subsequent designation, as the case may be.
In addition, holders must submit further declarations of intention to use the mark directly to the Office of Cabo Verde by using the prescribed form in Portuguese and paying the required fee. Such declaration must be submitted by the holder’s authorized representative, who must be domiciled in Cabo Verde.
Holders must present the declaration within five years from the date on which the Office of Cabo Verde granted protection to the mark in the international registration, that is, from the date of the statement that grants protection to the mark, issued by the Office of Cabo Verde in accordance with Rule 18ter of the Regulations under the Madrid Protocol. Holders must present additional declarations every five years thereafter.
Holders may file such declaration six months before the above-mentioned anniversaries, but no later than six months after the said anniversaries.
For more information, please click here Source: www.wipo.int Oct 06, 2022 (Newsletter Issue 14/22)Guide on Cybercrimes and Trade Secret Protection in EU & ChinaOn 19 September 2022, the European Commission published a guide on cybersecurity and trade secrets protection in the EU and China. The guide provides EU small and medium-sized enterprises (SMEs) with an overview of cybersecurity risks to trade secrets protection, as well as measures SMEs can take against potential cybercrime and remedies in the event of cyber theft of intellectual property.
The guide can be downloaded here Source: www.op.europa.eu Oct 06, 2022 (Newsletter Issue 14/22)Legal Protection of Geographical IndicationsOn 6 September 2022, the Parliament of Ukraine adopted the law on the peculiarities of the legal protection of geographical indications for agricultural products and food products, the protection of rights, and the application of quality schemes, including traditional guaranteed features for agricultural products and food products.
The aim is to ensure the fulfillment of Ukraine's obligations in the field of European integration regarding the harmonization of legislation with the law of the European Union, provided for in the Association Agreement between Ukraine and the EU and Regulation (EU) 1151/2012 of the European Parliament and the Council.
For more information, please click here Source: www.craneip.com Oct 06, 2022 (Newsletter Issue 14/22)
Digitisation of IP Office’s Trademark and Design Files Completed
On 25 August 2022, the Industrial Property Office of the Slovak Republic (SKIPO) successfully completed the digitisation of its paper files relating to trademarks and designs under the ECP5 project: Capture and Store Historical Files (CSHF).
The CSHF subproject, carried out within the framework of the European Cooperation Projects, aims at digitising paper files at all EU national intellectual property offices to enable easy and rapid access to documentation and data related to trademark and design files.
The digitisation process began in May 2021 and concluded towards the end of June 2022. A total of 42,453 files have been scanned and digitised.
Source: www.indprop.gov.sk
Oct 06, 2022 (Newsletter Issue 14/22)Clarification via Disclaimer that TM Is Not Equal to Health Authority AuthorisationIn order to curb misuse of pharmaceutical trademark registrations, the Angolan trademarks office (IAPI) has issued notice 9/2022 which states that, going forward, all registration certificates for pharmaceutical trademarks in class 5 shall now contain the following disclaimer:
“This title grants the right of ownership and exclusive use of the trademark throughout the national territory, excluding the certification of the pharmaceutical product (registration and authorization for the introduction of the drug in the Angolan market), which is the attribution of the Department of the competent Ministry.”
The IAPI is taking this preventive measure in order to clarify that trademark registration does not necessarily mean that a proprietor has obtained the necessary authority to launch a particular pharmaceutical product in Angola.
The requirement took effect for 29 July 2022.
For more information, please click here Source: www.adams.africa Sep 22, 2022 (Newsletter Issue 13/22)
New Exam Guidelines on TM Distinctiveness
On 1 September 2022, new guidelines came into effect on examination of trademark distinctiveness.
Therein, TIPO has provided examples for various types of trademarks and ensured that the basis on which distinction is determined for trademarks aligns with current market transactions.
Main revisions are as follows:
- Adaptations to the different compositional patterns of foreign alphabets; providing reference examples for determining whether descriptions are designed and distinctive.
- Addition of assessment criteria and example explanations for “alphanumeric combinations” and “numbers” in response to differences in use between various industries.
- Addition of the following categories with examples: “popular graphics”, “purely informational graphics”, and “commercial design graphics.”
- Addition of criteria for country names, geographical images, and geographical names used in descriptions of product origin, as well as misleading use or misrepresentation thereof for product origin.
- Addition of criteria for determining the name and portraits of well-known public figures who are recently deceased; provided criteria to assess whether it constitutes use of “portraits” of other persons; provided examples for reference.
- Addition of determining criteria for religious images and terms; added examination principles for marks related to traditional and cultural activities.
- Revision of criteria for slogans, common words, new terms, and technical terms, and adjusted the examination guidelines for “idioms.”
- Trademark graphics which include “the full name of the company” or “domain names” are considered strictly informational to prevent affecting the certainty of the scope of trademark rights and the function of correctly indicating the source of the product or service in the event that trademark rights are transferred or there is a change of name after registration.
Source: www.tipo.gov.tw
Sep 22, 2022 (Newsletter Issue 13/22)EUIPO Extends Time LimitsEUIPO informs about a new extension that has been granted for all parties in proceedings before the Office having their residence or registered office in Ukraine.
The two month extension published on 28 August 2022 extends all time limits expiring between 2 September 2022 and 1 November 2022, inclusive, until 2 November 2022.
This extension follows earlier Decisions EX-22-5, EX-22-4 and EX-22-2 of the Executive Director, which respectively extended all time limits expiring between: 2 June 2022 and 1 September 2002; 1 April 2022 and 1 June 2002; and 24 February 2022 and 31 March 2022.
For more information, please click here Source: www. euipo.europa.eu Sep 22, 2022 (Newsletter Issue 13/22)TM Practice Guidelines Updated On 14 September 2022, the IPONZ informs that the Office has updated its practice guidelines to confirm changes on how they consider prior use and clarify the terms of “providing a website”.
Overcoming a Citation
IPONZ has amended its practice guidelines on “Overcoming a Citation” to reflect the way they currently consider prior use of a trademark. IPONZ’s examiners will currently consider submissions and evidence relating to prior use when determining whether special circumstances exist in relation to a trademark application. This supersedes an earlier practice where examiners would not consider submissions that attempt to prove prior use.
The updated Trade Mark practice guidelines can be seen under 10 Overcoming a Citation.
Annexure to Computer Services and Annexure General
IPONZ has amended the “Annexure to Computer Services” practice guidelines for trademarks. These new and amended guidelines clarify how trademark examiners will assess “providing a website” terms (or similar) in goods and services specifications. These changes were made in order to maintain consistency with current NICE classifications and the way these terms are treated internationally.
IPONZ has also made a similar update to our Annexure General practice guidelines.
The updated Trade Mark practice guidelines can be seen under 3b Annexure General and 3c Annexure to Computer Services.Source: www.iponz.govt.nz Sep 22, 2022 (Newsletter Issue 13/22)IP Office Participates in WIPO Digital Access ServiceThe Patent Office of the Republic of Poland has notified WIPO, in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS), that it will act as an Accessing Office of WIPO DAS with effect from 1 September 2022.
The Office accepts all priority documents exchanged via WIPO DAS, including national and international patent applications, utility model applications, national and international design applications, and national trademark applications. Further, colour documents in PDF format are accepted.
For more information, please click here Source: www.wipo.int; www.uprp.gov.pl Sep 22, 2022 (Newsletter Issue 13/22)New Rules on Customs Recordation and Seizure of Counterfeit GoodsThe Thai Customs Department has issued a notification that amends the customs recordation system and customs procedures for seizing counterfeit and pirated goods. The ‘Customs Notification on the Export, Import, and Transit of Trademark- and Copyright-Infringing Goods’ was published in the Government Gazette on 4 August 2022 and became effective on 29 July 2022.
Under the new notification, trademark and copyright owners seeking customs recordation can now record their IP information directly with the Customs Department. Previously it needed to be registered with the Department of Intellectual Property (DIP).
For more information, please click here Source: www.tilleke.com Sep 22, 2022 (Newsletter Issue 13/22)Deadline for Commencement of Recordation of IP Rights ExtendedKenya introduced mandatory intellectual property rights (IPR) registration with the Anti-Counterfeit Authority (ACA) for all imported goods to strengthen the fight against counterfeiting. Not recorded goods in the database will be prevented from being imported into Kenya. Violations can result in fines and even imprisonment.
The deadline for the commencement of recordation was extended for another 6 months until 1 January 2023.
For more information, please click here Source: www.aca.go.ke Sep 22, 2022 (Newsletter Issue 13/22)New Cancellation Proceedings SoonAs of 14 January 2023, the procedure for trademark cancellation actions such as revocation and invalidity proceedings will change. The Spanish Trademark Office (SPTMO) will administer all cancellation actions instead of the intellectual property courts. This was prompted by Directive 2015/2436 on the Spanish Trademark Law.
For more information, please click here Source: www.brandwrites.law Aug 25, 2022 (Newsletter Issue 12/22)Significant Changes to IP LawOn 16 June 2022, Vietnam's National Assembly approved a comprehensive revision of Vietnam's IP Law ("Amended IP Law"). This represents a significant change to Vietnam's IP Law, affecting 80 of 222 articles and introducing 12 new articles. Apart from a few provisions, the Amended IP Law will take effect on 1 January 2023.
The most significant changes are outlined below:
Introduction of protection of sound marks / inclusion of ground for refusal
Sound marks are among the signs that can be protected as trademarks. They must be capable of being presented in graphic representations.
Article 73.7 was supplemented to include ground for refusal of sound marks that comprise “copies [in whole or part] of copyrighted works”, unless the consent of the copyright owners is obtained.
Definition of well-known mark modified
The definition of a well-known mark has been modified to “widely known by the relevant sectors of the public in the territory of Vietnam”. Further, the well-known status must be acquired before the filing date of a later trademark to serve as grounds for refusal of such later mark. The recognition of a trademark as well-known might be determined based on either several or all of the eight criteria indicated in Article 75.
Reduction of time limit for expired mark to be used to refuse later marks
The time limit for an expired mark to be used to prevent a later-filed trademark from being protected has been shortened to three instead of five years.
Suspension of examination procedures of trademarks during cancellation or invalidity proceedings
Under the Amended IP Law, applicants are entitled to request Vietnam’s IP Office to halt trademark examination procedures of their marks to wait for the outcome of the related non-use cancellation or invalidation proceedings.
“Bad Faith” is officially available as ground for opposition and invalidation
The Amended IP Law recognizes the act of “bad faith” as an independent legal ground to oppose and invalidate a trademark application or registration.
New grounds to refuse pending trademark and for termination/invalidation of registered marks
- Refusal: Two more grounds to refuse pending applications have been added:
(i) the use of the name of a plant variety that has been or is being protected in Vietnam if such sign is registered for goods that are a plant variety of the same or similar species or a product of the same species harvested from plant varieties; and
(ii) the use of names and images of characters or figures in works covered by copyright protection of others that were widely known before the filing date of the application.
- Termination: Two more grounds for termination of the validity of a registered trademark have been added:
(i) such registered trademark has become the common (generic) name of goods or services bearing that registered trademark; and
(ii) the use of a protected trademark by the owner of the trademark or by a person authorized by the owner misleads consumers as to the nature, quality, or geographical origin of the goods or services.
- Invalidation: Two new legal grounds for invalidating a registered trademark have been added:
(i) a registered trademark may be partly or entirely cancelled if the applicant for that trademark is ruled to have bad faith; and
(ii) the revision or modification of a trademark application has broadened or changed the nature of the originally filed trademark.
More detailed reasons to refuse three-dimensional trademarks
The Amended IP Law provides additional grounds and clarifies the grounds for refusal of three-dimensional trademarks.
Parallel procedures of trademark opposition and third-party opinions
The Amended IP Law introduces a new mechanism allowing a third party to oppose a trademark application, in addition to share written opinions during the examination procedures. The opposition can be filed within five months from the date of publication of the trademark application.
For more information, please click here Source: www.tilleke.com Aug 25, 2022 (Newsletter Issue 12/22)
Trademark Opposition Process Simplified
IP Australia informs that it has simplified the procedure for filing an opposition against the registration or cancellation of a trademark by providing a structured form for the notice of intention to oppose available through its online platform.
The Office also intends to improve the ‘Statement of grounds’ and ‘Notice of intention to defend’ forms.
Source: www.ipaustralia.gov.au
Aug 25, 2022 (Newsletter Issue 12/22)
New Filing System Launched / Official Fees Increased
On 2 June 2022, the Intellectual Property Office of Singapore (IPOS) has launched the new filing system IPOS Digital Hub. It replaces the e-services platform IP2SG.
The new system offers, among other things, an improved user interface, an enhanced search function, intellectual property management features and more support for IP dispute resolution procedures.
Alongside the launch of the new IP filing system, official fees were changed. The new official fee for filing a trademark application increased from SGD 240 to 280 for each class using the pre-approved list of goods and services and from SGD 341 to 380 for each class if it is not under the pre-approved list of goods and services.
Source: www.ipos.gov.sg
Aug 25, 2022 (Newsletter Issue 12/22)Executive Regulation of New Trademark Law in ForceOn 15 June 2022, Cabinet of Ministers Resolution No. (57) of 2022 on the Executive Regulations of Federal Law No. (36) of 2021 on the new Trademark Law (New Law) was published in the Official Gazette No. 729/52. The Executive Regulation (Regulation) includes 27 Articles and replaces all previous or conflicting legal provisions. It entered into force on 16 June 2022.
Some amendments are the following:
Multi-class application: Multi-class applications can now be filed.
Power of Attorney (PoA): Original legalized PoA (translated into Arabic) is required when filing a trademark application. According to current practice, the simply signed POA may be used if the legalized and certified PoA is submitted within 30 days after filing the application.
Non-traditional trademarks: They can now be registered such as 3D trademarks, single color, holograms, sound, and smell. MP3 files and musical notes shall be submitted for voice marks, and chemical formula illustrations are required for smell marks.
Appeals: The time limit for appealing the Trademark Office's decision on opposition to the Trademark Committee was extended from 15 to 30 days.
Publication in Official Gazette: The publication of the accepted trademark application, renewal and cancellation shall take place in the Official Gazette of the Ministry.
Grace Period for trademark renewals: The renewal grace period for trademarks is extended from 3 to 6 months after expiration.
Cancellation Action: Cancellation action of a trademark shall be filed with the Trademark Committee of the Ministry of Economy, as opposed to the courts. The Ministry is the competent authority for the cancellation requests. A time frame of 90 days is specified for the issuance of a decision by the Ministry of Trademarks from the date of filing the complaint.
Trademark License: Filing a trademark license is possible for any person or entity. The recordal of a license is not any more required. However, the Regulation stipulates in Article 18 (1) some conditions for the license agreement which shall be executed in writing and duly notarized, legalized and translated into Arabic in case it is executed in another language.
Geographical Indications (Gis): GIs can now be registered. GIs enjoy protection under the New Law as long as they are protected in the country of origin. If GIs lead to confusion with a trademark application or with a trademark that has been used in good faith in the country, they cannot be registered.
Customs seizures: The New Law follows the GCC Trademark Law and regulates customs seizures. Article 24 of the Regulation sets out the procedures to be initiated by the trademark owner to stop the customs release of counterfeit or forged goods or goods bearing a similar mark to his registered trademark.
International Registrations: The Madrid Protocol's executive regulations and amendments shall apply to international registration applications submitted in accordance with the Madrid protocol regarding international Trademark registration.
For more information, please see here and here.Source: www.moec.gov.ae; www.utmps.com Aug 25, 2022 (Newsletter Issue 12/22)Amendments to Designs Act in ForceIP Australia informs that the amendments to the Designs Act are now in force. These changes will provide more flexibility during the early stages of seeking design protection.
The key changes to the Designs Act include:
- Introduction of a grace period
- Simplification of the design registration process
- Updated formal requirements
For more information, please see hereSource: www.ipaustralia.gov.au Aug 11, 2022 (Newsletter Issue 11/22)Official Forms for Trademark Matters IssuedOn 1 July 2022, the Ministry of Commence (MOC) issued its Notification No. 44/2022 to prescribe 19 official forms in the Myanmar and English languages for trademark matters under the Trademark Law 2019 as follows:
- TM 1 Form for filing a trademark application;
- TM 2 Form for appointment of representative(s);
- TM 3 Form of request for reinstatement of application;
- TM 4 Form of request for correction of an application;
- TM 5 Form of request for withdrawal of an application;
- TM 6 Form of request to limit the list of goods or services under an application;
- TM 7 Form of request to split an application;
- TM 8 Form for opposition against a trademark application;
- TM 9 Form of request for certified a copy of the registration certificate;
- TM 10 Form of request for amendment to a trademark registration;
- TM 11 Form of request for renewal of a trademark registration;
- TM 12 Form of request to record the transfer of a trademark registration;
- TM 13 Form of request to record the license of a registered trademark;
- TM 14 Form of request to cancel the recordal of a license of a registered trademark;
- TM 15 Form of request for invalidation of a registered trademark;
- TM 16 Form of request on cancellation of a registered trademark;
- TM 17 Form of request to change the representative(s);
- TM 18 Form of request for extension of time; and
- TM 19 Form for filing an appeal with the IP Agency.
Form TM 1 can be used for refiling for trademarks registered under the old trademark registration system and for filing for a new trademark registration. Forms TM 1 to TM 18 must be filed with the Registrar of Trademarks. Form TM 19 must be filed with the Chairman of the Intellectual Property Agency.
Foreign trademark owners must appoint a Myanmar representative for each matter. Form TM 2 (Power of Attorney) is required and must be duly notarized by a notary public. TM 2 must be filed digitally through the MOC's electronic trademark filing system or physically at the MOC's filing counters.
Source: LawPlus Ltd., Thailand Aug 11, 2022 (Newsletter Issue 11/22)
Accession to ARIPO System
On 14 July 2022, Cape Verde deposited the instruments of Accession to the Lusaka Agreement, Banjul Protocol, Harare Protocol, Swakopmund Protocol, and Arusha Protocol with the ARIPO Director General.
As Cape Verde becomes the 22nd ARIPO Member State, from now on users of the ARIPO system will be able to designate Cape Verde as one of the designated countries for the application of the following Intellectual Property Rights: trademarks, patents, industrial designs, protection of traditional knowledge and expressions of folklore, and protection on new varieties of plants.
Source: www. inventa.com; www.aripo.org
Aug 11, 2022 (Newsletter Issue 11/22)New Trademark Law Entered into ForceOn July 28, 2022, a new Law on Trademarks entered into force in Kosovo, harmonizing local legislation with Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks. The new Law also provides a basis for the implementation of Directive 2004/48/EC on the enforcement of intellectual property rights.
The most significant changes are outlined below:
- No Requirement of Graphical Representation:
Graphical representation is no longer required when filing a trademark application.
- Literal Interpretation of Class Headings:
It is now required to precisely define the list of goods and services for which protection is sought.
- Additional Absolute and Relative Grounds for Refusal:
Additional absolute grounds for refusal are introduced. A sign cannot be registered if it conflicts with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guaranteed or plant variety.
In terms of relative grounds for refusal, a bad faith trademark application can now be opposed.
- Exhaustion of Rights:
Trademark owners cannot prohibit the importation of genuine goods bearing their trademarks after they have placed them on the market in any of the following markets: Kosovo, a member state of the EU or EEA or the Western Balkans region, or a state with which Kosovo has concluded a free trade or trade facilitation agreement.
- Trademark Infringement Scope Expanded:
The scope of trademark infringement has been expanded by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely use of a sign as a company name, in advertising, on packaging, labels, tags and security or authenticity features or devices, and placing these on the market.
- Introduction of Disclaimers:
If a trademark includes an element that might not be considered distinctive, the IPO may require the applicant to impose a disclaimer on the non-distinctive element.
- The Non-Use Defense:
In court proceedings, the defendant may now request that the plaintiff show the use of the trademark claimed to have been infringed.
- Appeals with the Market Inspectorate:
It is now possible to enforce trademarks in an administrative procedure by filing an appeal with the Market Inspectorate against an infringer. The appeal procedure will be further elaborated in bylaws, which will be adopted by July 28, 2023.
- Other changes:
In connection with the enforcement of trademark rights, such as modification of the time frame for filing an appeal against an IPO decision, monetary compensation for the seizure and destruction of infringing goods.
For more information, please check here Source: www.sdpkosove.com Aug 11, 2022 (Newsletter Issue 11/22)Guidelines for IP Protection at ExhibitionsOn July 22, the China National Intellectual Property Administration (CNIPA) published guidelines for improving IP protection at exhibitions and trade fairs. The guidelines allow for setting up a workstation at an exhibition to accept IP infringement complaints, provide judgement opinions, transfer evidence to relevant law enforcement departments, etc. The IP management department of the place where the exhibition is held may, in conjunction with relevant departments, guide the exhibition organizers to set up workstations in accordance with the relevant provisions of the State and actual needs.
If a respondent does not reply to a complaint within 24 hours of receipt, the complaint of infringement is confirmed via valid legal documents, or the respondent admits to the infringement, the exhibition organiser can take actions including removing the exhibitor’s display. These guidelines apply to both online and in-person exhibitions and trade fairs.
For more information, click here (Chinese only).Source: www.gov.uk; www.cnipa.gov.cn Jul 27, 2022 (Newsletter Issue 10/22)Guidelines on Examination of 3D Marks IssuedOn 13 May 2022, the Court of Justice of the Andean Community published Interpretation No. 81-IP-2020 on the examination of 3D marks. The new guidelines clarify that 3D marks may consist only of shapes or be a combination of shapes and additional elements and describe the different elements that the Andean Community’s IP Offices (Bolivia, Colombia, Ecuador, and Peru) must consider when examining these marks. These guidelines are important as they recognize the protection of 3D marks and harmonize how IP offices of the Andean Community examine these applications.
For more information and examples, please click here
Source: Bermeo & Bermeo Law Firm, Ecuador, see INTA Bulletin of 22 June 2022 Jul 27, 2022 (Newsletter Issue 10/22)Guidelines on Examination of 3D Marks IssuedOn 13 May 2022, the Court of Justice of the Andean Community published Interpretation No. 81-IP-2020 on the examination of 3D marks. The new guidelines clarify that 3D marks may consist only of shapes or be a combination of shapes and additional elements and describe the different elements that the Andean Community’s IP Offices (Bolivia, Colombia, Ecuador, and Peru) must consider when examining these marks. These guidelines are important as they recognize the protection of 3D marks and harmonize how IP offices of the Andean Community examine these applications.
For more information and examples, please click here
Source: Bermeo & Bermeo Law Firm, Ecuador, see INTA Bulletin of 22 June 2022 Jul 27, 2022 (Newsletter Issue 10/22)Guidelines on Examination of 3D Marks IssuedOn 13 May 2022, the Court of Justice of the Andean Community published Interpretation No. 81-IP-2020 on the examination of 3D marks. The new guidelines clarify that 3D marks may consist only of shapes or be a combination of shapes and additional elements and describe the different elements that the Andean Community’s IP Offices (Bolivia, Colombia, Ecuador, and Peru) must consider when examining these marks. These guidelines are important as they recognize the protection of 3D marks and harmonize how IP offices of the Andean Community examine these applications.
For more information and examples, please click here
Source: Bermeo & Bermeo Law Firm, Ecuador, see INTA Bulletin of 22 June 2022 Jul 27, 2022 (Newsletter Issue 10/22)Guidelines on Examination of 3D Marks IssuedOn 13 May 2022, the Court of Justice of the Andean Community published Interpretation No. 81-IP-2020 on the examination of 3D marks. The new guidelines clarify that 3D marks may consist only of shapes or be a combination of shapes and additional elements and describe the different elements that the Andean Community’s IP Offices (Bolivia, Colombia, Ecuador, and Peru) must consider when examining these marks. These guidelines are important as they recognize the protection of 3D marks and harmonize how IP offices of the Andean Community examine these applications.
For more information and examples, please click here
Source: Bermeo & Bermeo Law Firm, Ecuador, see INTA Bulletin of 22 June 2022 Jul 27, 2022 (Newsletter Issue 10/22)Accession to Hague System and WIPO’s Classification Treaties SoonOn 18 July 2022, the Peruvian Trademark Office (INDECOPI) announced that it will deposit its accession to the Geneva Act of the Lisbon Agreement and to four WIPO’s classification treaties such as the Nice Agreement, the Vienna Agreement, the Locarno Agreement, and the Strasbourg Agreement.
The accession to the Madrid Agreement regarding the international registration of trademarks is still to be reviewed and analysed.
For more information, please click here Source: www.andina.pe Jul 27, 2022 (Newsletter Issue 10/22)IP Laws Amended and TM Opposition Period IntroducedOn June 20, 2022, Kazakhstan adopted a set of amendments to various intellectual property laws introducing significant changes in the field of intellectual property in relation to trademarks, geographical indications, patents, and industrial designs. The amendments will come into force on 21 August 2022.
With respect to trademarks, the most important changes are the following:
- Introduction of an opposition procedure for trademarks
An opposition procedure for trademarks has been introduced. Pending trademark applications are published weekly on the Intellectual Property Office (IPO) website. Any interested person may file an opposition to the pending applications on absolute or relative grounds within one month from the date of publication of the application with the IPO.
- Time limit for formal examination extended
The time limit for formal examination of a trademark application has been extended from 10 working days to one month from the application filing date.
- Time limit for IPO to record changes to registered trademarks changed
The time limit for the IPO to record changes to registered trademarks has been shortened from one month to 10 working days. The deadline for the IPO to inform trademark owners of recorded changes has also been significantly shortened, from two months to five working days.
- No obstacle to registration if distinctive character acquired through use before filing date
Currently, trademarks that are not capable of distinguishing the goods or services of one person from those of another are denied protection on absolute grounds. The only way to avoid refusal of protection is to impose a disclaimer on a non-distinctive element if it does not occupy the dominant position in the mark. According to the amendments, such elements are not an obstacle to registration if the distinctive character was acquired through use before the filing date.
In addition, it is already possible in Kazakhstan to register geographically related signs and names as appellations of origin (AO). Soon, the protection of geographical indications (GIs) will also be possible.
For more information, please click here Source: www.petosevic.com Jul 27, 2022 (Newsletter Issue 10/22)
Change of Practice
As of 31 March 2022, the Nicaraguan Trademark Office has lifted the COVID 19 flexibility for filing documents without complete legalization and now requires that all documents must be presented duly certified by Apostille or consular means. In the case of a document in a foreign language, it is also required its official translation into Spanish before a Nicaraguan notary public.
Furthermore, according to current practice at the Nicaraguan Trademark Office, the following information must be provided at the time of filing or during the course of the trademark registration procedure (applies for corporations or other entities):
- The number and date of registration of the company.
This requirement will only apply in cases of trademark applications, including new applications as well as those that are already under process, and will not be required for any other types of procedures such as renewals or assignment recordals, etc.
The requirement can be fulfilled by various means such as:
a) with the filing of a brief document in which the information is included;
b) the inclusion of the information in the trademark registration application form;
c) the inclusion of the information through the powers granted to local agents.
For applications that are already under process and for which the required information has not yet been submitted, the Trademark Office will issue an individual notification for each case requesting the submission of the information with a term of 15 business days.
Source: Guy José Bendaña-Guerrero & Asociados
Jul 14, 2022 (Newsletter Issue 9/22)New Law in ForceOn 9 May 2022, the Instituto Nacional de Propiedad Industrial (INAPI) announced that the new Law No. 21,355 (Law) entered into force. The new Law was published in the Official Gazette on 5 July 2021, amending the Industrial Property Act 19.039 and Law No 20,254.
The new Law aims to modernize the IP system and provide better protection and enforcement of IP rights, particularly patent and trademark rights. Concerning trademarks, the new regulations introduce the following changes:
- The definition of trademarks is modified to protect distinctive non-traditional signs such as olfactory, 3-D, tactile, positional, and hologram trademarks.
- Commercial and industrial establishments cannot get registered as trademarks any longer. Existing marks of this kind shall be renewed as service marks in classes 35 and 40 to keep the rights acquired by the holders of such registrations.
- The trademark owner is required to make actual and effective use of its sign in the market. The revocation may only be requested by whoever has a legitimate interest and may not be declared ex officio.
- The regulations for collective and certification marks are aligned to international standards.
- Trademark renewals may be requested six months before the end of the term and up to six months after. Renewal fees are due for payment with the renewal application. Renewals requested after the registration’s expiration will be subject to a surcharge of 20% for each month or a fraction of a month.
- Specific legitimate uses of another’s trademark are allowed for names or pseudonyms and generics.
- The offense of trademark counterfeiting is typified and penalized with a prison sentence (currently, there is only a fine for the benefit of the Public Prosecutor).
- The law established a compensation system with pre-established indemnities for trademark infringement.
For more information, please click hereSource: www.inapi.cl, www.clarkemodet.com Jul 14, 2022 (Newsletter Issue 9/22)Japan-China-Korea Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
The Japan Patent Office (JPO), the China Intellectual Property Office (CNIPA), and the Korean Intellectual Property Office (KIPO) have been working to establish a concordance lists showing the corresponding relationships between the respective similar group codes used for trademark examination at the JPO, the CNIPA, and the KIPO, based on a trilateral agreement signed by the three offices.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
For information, please check JPO's website here Source: www.jpo.go.jp Jul 14, 2022 (Newsletter Issue 9/22)Japan-China-Korea Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
The Japan Patent Office (JPO), the China Intellectual Property Office (CNIPA), and the Korean Intellectual Property Office (KIPO) have been working to establish a concordance lists showing the corresponding relationships between the respective similar group codes used for trademark examination at the JPO, the CNIPA, and the KIPO, based on a trilateral agreement signed by the three offices.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
For information, please check JPO's website here Source: www.jpo.go.jp Jul 14, 2022 (Newsletter Issue 9/22)Japan-China-Korea Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
The Japan Patent Office (JPO), the China Intellectual Property Office (CNIPA), and the Korean Intellectual Property Office (KIPO) have been working to establish a concordance lists showing the corresponding relationships between the respective similar group codes used for trademark examination at the JPO, the CNIPA, and the KIPO, based on a trilateral agreement signed by the three offices.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
For information, please check JPO's website here Source: www.jpo.go.jp Jul 14, 2022 (Newsletter Issue 9/22)Identity Verification for USPTO.gov Account Holders to Be Mandatory in AugustStarting 6 August 2022, the United States Patent and Trademark Office (USPTO) will require identity verification for USPTO.gov account holders using the Trademark Electronic Application System (TEAS) and TEAS international (TEASi).
For more information, see the published Federal Register Notice and the Director's blog.Source: www.uspto.gov Jul 14, 2022 (Newsletter Issue 9/22)
Declaration of Intention to Use for International Registrations Designating Cape Verde
On 5 July 2022, the Government of Cabo Verde has notified WIPO in accordance with Rules 7(2), 27bis(6) and 27ter(2)(b) of the Regulations under the Madrid Protocol.
When Cape Verde is designated under the Madrid Protocol, it requires a declaration of intention to use the mark.
Further, the Office of Cabo Verde will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).
Cape Verde became a member of the Madrid Protocol on 6 July 2022.
Source: www.wipo.int
Jul 14, 2022 (Newsletter Issue 9/22)Amended Trademark Act and Design Protection Act in ForceThe Korean Trademark Act (TMA) and the Design Protection Act (DPA) were amended and became effective on April 20, 2022. In addition, the Guidelines for Trademark Examination (Guidelines) were revised and also took effect on the same date. The main amendments are described below.
Response to final rejection now due in 3 months
Trademark and design applicants now have three months to file an appeal, request for reconsideration, and/or divisional/converted application in response to a final rejection notice. Previously, it was 30 days.
Relaxed requirements for restoration of trademark/design rights
In the amended Acts, the term "reasons not imputable to a person" has been relaxed to simply "reasonable reasons," in order to more broadly protect applicants from losing rights due to circumstances out of their control.
Automatic recognition of priority for divisional applications
The amended Acts provide that as long as priority is properly claimed in the original parent application, the same priority is automatically recognized for any divisional application filed from that parent application.
Introduction of new ex-officio re-examination procedure
The amendment provides for a new ex officio re-examination system, under which an examiner who determines that there are obvious refusal grounds for an application after the application is allowed, but before the application is registered, may withdraw the decision to grant a registration and reopen the examination of the application.
Non-exclusive licenses to trademark/design co-owners after transfer of such rights
The amended Acts now provide that co-owner of a trademark/design right who do not consent to a court conduct an auction to sell the trademark or design right in its entirety to a third party are granted a non-exclusive license, if they were already using the concerned registered trademark or using a design identical or similar to the concerned registered design prior to the filing of the auction request. In the case of a trademark right, the license is granted only for uses with goods in connection with the trademark prior to the filing of the request.
Broadening of acceptable evidence of intent to use
The amended trademark examination guidelines recognize intent to use the mark by another entity that can be controlled and directed by the applicant as valid evidence of intent to use, consistent with Article 19 of the TRIPS Agreement. Accordingly, applicants are now able to submit license agreements as evidence of intent to use their mark. In such cases, however, the examiner may still find lack of intent to use if it is objectively impossible for the applicant to control and manage the use of the mark by the license, e.g., if the licensor is legally incompetent.
For more information, please check here and here. Please also check our previous post here Source: www.ip.kimchang.com Jun 30, 2022 (Newsletter Issue 8/22)
Martial Law Extended
The Law “On Protection of Interests of Intellectual Property in Martial Law” (Law No 7228) has been extended for an additional 90 days until 23 August 2022 by the Verkhovna Rada, Ukrainian Parliament.
Under the new law, the time limits for the protection of intellectual property rights and the time limits for procedures for acquiring such rights are suspended, as we reported on 21 April 2022. The law applies to all holders of IP rights before Ukrainian IP Office (Ukrpatent), including both Ukrainian and foreign holders of IP rights.
Source: www.rada.gov.ua; www. ukrpatent.org
Jun 30, 2022 (Newsletter Issue 8/22)TTAB Manual of Procedure UpdatedThe United States Patent and Trademark Office (USPTO) informs that the June 2022 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board (TTAB) webpage under "Practice and procedure" here
The revision includes precedential citations to legal opinions from the TTAB and the Federal Circuit made between February 28, 2021, and March 4, 2022. The modification reflects changes due to the Trademark Modernization Act of 2020, including a new Chapter 1300 “Ex Parte Appeals from Expungement or Reexamination of Registration Proceedings.”Source: www.uspto.gov Jun 30, 2022 (Newsletter Issue 8/22)Official Arabic Translation of TM Application in Certain Cases Required The Ministry of Economy and Trade announced that trademark applications containing words/characters in languages other than Arabic, English or French must be accompanied by an official Arabic translation by a sworn translator reflecting the words constituting the trademark.
The new requirement was published in Memo No. 6/1/A.T. of 2022, which came into force on 10 May 2022.
Source: JAH & Co. IP, Qatar Jun 30, 2022 (Newsletter Issue 8/22)Official Publication Fees ReducedThe official publication fees for new trademark applications and recordals have been reduced with effect from 9 June 2022. This reduction applies retroactively to all trademark applications pending examination, regardless of the filing date or recordal filed after that date will be subject to the new fees.
According to the online payment portal, the new publication fees in local currency (including VAT) are as follows:
- Publication fees for opposition purposes for regular trademarks, series of marks, or a collective mark: 575 SAR
- Publication fees for effecting renewals, license, or mortgage of trademark registration: 1,150 SAR
- Publication fees for recordal actions such as change of name and/or address, assignment, merger, or amendment of trademark registration: 575 SAR
Source: JAH & Co. IP, Qatar Jun 30, 2022 (Newsletter Issue 8/22)Accession to Geneva Act of Lisbon AgreementOn 2 June 2022, WIPO notified the deposit by the Government of the Czech Republic of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
The Act will enter into force with respect to the Czech Republic on 2 September 2022.
For more information, please check the notice hereSource: www.wipo.int Jun 30, 2022 (Newsletter Issue 8/22)Guidelines on Punitive Damages in Civil IP Cases IssuedOn 25 April 2022, the Beijing High People's Court issued Guidelines on the Application of Punitive Damages in the Trial of Intellectual Property Infringement Civil Cases (Guidelines) in order to further harmonise the application of punitive damages in civil IPR infringement cases and strengthen judicial protection of IPR.
The Guidelines are divided into six sections with 51 articles dealing with general issues such as the principles of application of punitive damages and substantive issues in the application of punitive damages, including the legal requirements, the calculation of punitive damages and the relevant provisions for Internet service providers.
In addition, the Guidelines address procedural issues, especially in relation to claiming or modifying punitive damages, as well as the specific requirements for the application of punitive damages in joint litigation and provide information on the scope of application.
For more information, please see here Source: www.dlapiper.com Jun 02, 2022 (Newsletter Issue 7/22)Agreement between DE and CH on Reciprocal Protection for Patents, Designs and Trademarks TerminatedBy notices dated 30 April and 29 December 2021, Germany terminated the Agreement of 13 April 1892 between Switzerland and Germany on Reciprocal Protection for Patents, Designs and Trade Marks (SR 0.232.149.136).
This decision follows a judgment by the Court of Justice of the European Union dated 22 October 2020 (joined cases C-720/18 and C-721/18), in which the court ruled that the above agreement was incompatible with European law ([EU] Directive on trademarks). The communication of this termination was published on 9 March 2022 in the Official Compilation of Federal Legislation (AS 2022 156), and became effective on 31 May 2022.
For more information, please see here
Source: www.ige.ch; www.fedlex.admin.ch; Isler & Pedrazzini AG, Patent & Trademark Attorneys, Switzerland Jun 02, 2022 (Newsletter Issue 7/22)Agreement between CH and DE on Reciprocal Protection for Patents, Designs and Trademarks TerminatedBy notices dated 30 April and 29 December 2021, Germany terminated the Agreement of 13 April 1892 between Switzerland and Germany on Reciprocal Protection for Patents, Designs and Trade Marks (SR 0.232.149.136).
This decision follows a judgment by the Court of Justice of the European Union dated 22 October 2020 (joined cases C-720/18 and C-721/18), in which the court ruled that the above agreement was incompatible with European law ([EU] Directive on trademarks). The communication of this termination was published on 9 March 2022 in the Official Compilation of Federal Legislation (AS 2022 156), and became effective on 31 May 2022.
For more information, please see here Source: www.ige.ch; www.fedlex.admin.ch; K&P Patentanwaltsgesellschaft mbH, Germany Jun 02, 2022 (Newsletter Issue 7/22)New Online Service for International RegistrationThe Swiss Federal Institute of Intellectual Property (IPI) informs about a new platform that makes it easier to apply for International Registrations under the Madrid system.
The newest online service is linked to the Trade Mark Database initiated by the IPI in 2020. It enables all interested parties to search for protected national and international trademarks and trademark applications in Switzerland.
In addition, trademark applicants are guided step by step through the international application process. They can save their data at any point and continue later or share their application with others via a link. Attachments can be uploaded directly. Moreover, the IPI no longer needs to enter data manually, but can start examining the application immediately.
The new online service can be accessed here Source: www.ige.ch Jun 02, 2022 (Newsletter Issue 7/22)Common Practice on Figurative MarksColombia's Superintendence of Industry and Commerce (SIC) has published a practice paper on figurative marks containing descriptive/non-distinctive words.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice of the SIC and the IP offices of the European Union Intellectual Property Network (EUIPN) is based. It seeks to increase transparency, legal certainty, and predictability for the benefit of the users and examiners of the IP offices involved. It is intended to be a reference for IP offices, users of the EU and Colombian IP systems, and other interested parties.
The practice paper is available in Spanish and English.Source: www. euipo.europa.eu Jun 02, 2022 (Newsletter Issue 7/22)New Guide Clarifying Examination Evidentiary Standard for Marks Refused as GenericThe United States Patent and Trademark Office (USPTO) issued a new examination guide titled ”Clarification of Examination Evidentiary Standard for Marks Refused as Generic”.
This update to the guidance clarifies USPTO’s terminology in the Trademark Manual for Examination Procedures (TMEP) regarding the examining attorney’s burden when making a genericness refusal. The guide also clarifies that the standard for an examining attorney to establish a prima facie case of genericness is the same as for other refusals, namely, there must be sufficient evidence to support a reasonable predicate for the refusal under the applicable legal standard.
To access the new guide, please click here or visit the USPTO’s Examination Guides webpage here Source: www.uspto.gov Jun 02, 2022 (Newsletter Issue 7/22)
Accession to Geneva Act of the Hague Agreement
On 22 April 2022, the Government of Morocco deposited its instrument of accession to the 1999 Geneva Act. Morocco is the 69th contracting party to join the 1999 Act.
The Act will enter into force in Morocco on 22 July 2022.
Source: www.wipo.int
Jun 02, 2022 (Newsletter Issue 7/22)Typical IP Enforcement Cases ReleasedOn 21 April 2022, the State Administration for Market Regulation (SAMR) released typical cases of IP enforcement by Market Supervision Departments.
The 20 cases covered trademark infringement, patent counterfeiting, Olympic logos, malicious trademark registration and the unauthorized practice of patent law, etc.
For more information, please click here
Source: www.chinaiplawupdate.com Jun 02, 2022 (Newsletter Issue 7/22)New Industrial Property Act in ForceOn 31 January 2022, the new Industrial Property Act 2019 came into force. The new Act brings together all matters relating to industrial property in a single statue. It further modernises the IP law in Mauritius and brings it in line with international standards.
The framework for the protection of the law consists of the following five legal acts:
1. Patent, Utility Models, Patent Cooperation Treaty;
2. Layout-Designs of Integrated Circuits;
3. Protection of New Varieties of Plants;
4. Industrial Designs governed by the Hague Agreement;
5. Marks, Trade Names, Geographical Indications, Madrid Protocol.
View our previous news here or check out more information here Source: www. spoor.com May 19, 2022 (Newsletter Issue 6/22)Official Language Requirements AmendedOn January 11, 2022, legislative amendments concerning the status and use of the two official languages, Kazakhstan and Russian, came into force.
Under recent amendments, signboards of privately owned businesses and of non-governmental organisations, their announcements, advertisements, forms, price lists, price tags, menus, signs, and other visual information no longer must be in both Kazakh and Russian. They need to be in Kazakh only but may also be in Russian and/or other languages if required in certain circumstances.
Trademarks protected in Kazakhstan which are used in signboards of non-governmental organizations should remain unchanged and do not need to be translated.
It is now mandatory to use both Kazakh and Russian languages on:
- Labels applied to medication packaging and on the document that provides information about the medicine and its use; and
- Labels applied either directly to medical products or to their packaging and on instructions for their use (this applies to any instruments, devices, equipment, materials, and other items used in medical facilities).
For more information, please see here Source: www.petosevic.com; www.sber-solutions.kz May 19, 2022 (Newsletter Issue 6/22)Law on Geographical Indications AdoptedOn March 3, 2022, the first Law on Geographical Indications came into force in Uzbekistan, introducing the rules and grounds for registration and use of geographical indications (GIs).
The new law defines GIs as a designation identifying goods originating from a certain geographical area, if their quality, reputation, and other characteristics can be essentially attributed to their geographical origin.
The law provides for the registration of new GIs and the registration of the right to use existing GIs. It also allows for the registration of foreign GIs – the procedure is the same as for national GIs.
For more information, please see here Source: www.petosevic.com May 19, 2022 (Newsletter Issue 6/22)Electronic Registration Certificates to Be Issued SoonThe United States Patent and Trademark Office (USPTO) will begin issuing electronic trademark registration certificates on June 7, 2022. Upon issuance, the electronic registration certificate will be the official registration certificate. After the USPTO begins issuing electronic registration certificates, trademark owners will have the option to order paper “presentation” copies for a fee. They will also continue to be able to order certified copies of their trademark registrations.
For more information, please see here Source: www.uspto.gov May 19, 2022 (Newsletter Issue 6/22)
Surcharges for Late Renewals Temporarily Exempted
The Department of Intellectual Property (DIP) has temporarily exempted surcharges for trademark renewal fees during the grace period and surcharges for late annuity fees for patents, petty patents, and designs.
The measures are active from 9 April 2022 to 30 September 2022 due to COVID-19.
Source: www.rouse.com
May 19, 2022 (Newsletter Issue 6/22)Additional Guidance on China’s Accession to Hague SystemChina's accession to the Hague System entered into force on 5 May 2022, as we have previously reported. WIPO now provides guidance for users who wish to designate China in international applications with regard to the Hague System. The following information is available:
- Information on specific views required for three-dimensional designs and graphical user interfaces
- Updated guidance on including multiple designs in an international application
- Updated guidance on preparing and providing reproductions
- Individual designation fees
For more information, please see here Source: www.wipo.int May 19, 2022 (Newsletter Issue 6/22)Simplified Court Procedures for IP DisputesOn 1 April 2022, the new Supreme Court of Judicature (IP) Rules 2022 (SCJIPR 2022) came into force.
The new Rules provide for a new optional track for IP disputes for certain claims. The new single streamlined procedure will ensure time and cost proportionality for IP disputes and is especially suitable for individuals as well as small and medium-sized enterprises.
The key features of the simplified process are as follows:
1. It is generally suitable if the dispute involves an IP right, where the monetary relief claimed by each party in the action does not or is not likely to exceed SGD 500,000 or where all parties agree to the application of the process.
2. At a case conference, the court must give directions on all matters necessary for the case to proceed expeditiously and, if practicable, give directions to ensure that the trial is completed within 2 days.
3. If the case is proceeding to trial, the total costs ordered against a party must not exceed SGD 50,000 in relation to the trial of the originating claim and must not exceed SGD 25,000 in relation to any bifurcated assessment as to the amount of monetary relief after any set off.
For more information, please see here Source: www.judiciary.gov.sg Apr 21, 2022 (Newsletter Issue 5/22)Future of Foreign IP Rights UncertainThe Russian government is taking steps to lessen intellectual property rights and eliminate enforcement mechanisms within the country's borders. It is likely that piracy of patented technologies, brand names and logos, and copyrighted works will increase.
By Decree No. 299 of March 6, 2022, the Russian Government determined that, as of the date of the Decree, in cases where the Russian authorities decide to grant a compulsory license for reasons of national security, the compensation due to the owner patents for inventions, industrial designs, and utility models originating in “unfriendly” countries shall be zero. The Decree amended Article 1360 of the Russian Civil Code on compulsory licenses and reduced the compensation for the right holder from 0.5% to 0% of the profits from the exploitation of the right itself.
Countries considered unfriendly by Russia include Albania, Andorra, Canada, European Union countries, Iceland, South Korea, Lichtenstein, Macedonia, Micronesia, Monaco, Montenegro, New Zealand, Norway, San Marino, Singapore, Sweden, Taiwan, Ukraine, the United Kingdom, and the United States.
In addition, according to a Federal Law dated March 8, 2022, the Russian Government may establish a list of goods for which exclusive rights, such as trademarks, may not be granted. So far, the list of goods has not been published.
Furthermore, the Russian court system has diluted foreign trademark rights. A Russian court has decided to allow the continued infringement of two Peppa Pig trademarks in response to Western economic sanctions. Entertainment One UK Limited, a subsidiary of Hasbro Inc., brought a trademark infringement suit against a Russian entrepreneur for use of its “Peppa Pig” and “Daddy Pig” marks. The suit was dismissed by the Arbitration Court of the Kirov Region in a decision published on March 3, 2022. The presiding judge specifically cited the economic sanctions imposed by the United States and other European countries as grounds for ruling the case was an “abuse of right” and thus subject to dismissal. Following this ruling, trademark applications have already been filed in Russia that clearly copy famous brands like McDonald’s and Starbucks.
For more information, please see here and hereSource: www.rapisardi.com; www.us.eversheds-sutherland.com Apr 21, 2022 (Newsletter Issue 5/22)
Official Publication Fees for IP Rights Increased
SANA’A - The Yemeni Ministry of Industry and Commerce has issued Ministerial Decision No. 28 of 2022 stating that the publication fees for industrial property rights (trademarks, patents, and designs) have been increased from March 1, 2022.
The increase was applied to the publication fees for trademark, patent and design applications, their renewals as well as their recordals.
Source: www.agip.com
Apr 21, 2022 (Newsletter Issue 5/22)
Accession to Madrid Protocol
On April 4, 2022, WIPO notified the deposit by the Government of the Republic of Chile of its instrument of accession to the Madrid Protocol.
The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of the Republic of Chile, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol will enter into force, with respect to Chile, on July 4, 2022.
Source: www.wipo.int
Apr 21, 2022 (Newsletter Issue 5/22)Accession to Madrid ProtocolOn April 6, 2022, the Government of Cape Verde deposited its instrument of accession to the Madrid Protocol.
The Protocol will enter into force for this country on July 6, 2022.
For more information, please click hereSource: www.wipo.int Apr 21, 2022 (Newsletter Issue 5/22)Operation of IP Office During State of WarLegal Basis during state of war
The Ukrainian Parliament passed the Law “On Protection of Interests of Intellectual Property in Martial Law” (Law No 7228). Under the new law, the time limits for the protection of intellectual property rights as well as the time limits for procedures for acquiring such rights are suspended.
According to the law, authorised persons may file documents within 90 days of the lifting of martial law without paying a fee for the extension or restoration of the relevant time deadlines. The law applies to all holders of IP rights before Ukrainian IP Office (Ukrpatent), including both Ukrainian and foreign holders of IP rights.
The martial law was declared in Ukraine on February 4, 2022, following the issue of Decree 64/2022, for a period of 30 days. On March 26, 2022, the Ukrainian Parliament voted to extend the martial law for a further 30 days. It is expected to be extended again before the end of April 2022.
Operation of IP Office
The Ukrainian IP Office (Ukrpatent) continues to accept new applications for trademarks, patents, and copyrights – both under national and international procedures - in electronic form only. In all procedures where paper copies are required, the IP Office accepts scan copies with the obligation of the applicant/representative to submit paper copies after the end of the state of war. The same rules apply to the registration of license and assignment agreements, filing of oppositions, etc.
The IP Office continues to conduct examination procedures and publish decisions on the registration of IP rights. For the time being, the new registration certificates are only available in electronic form. Paper copies will be printed and sent later.
The Board of Appeals of Ukrpatent has suspended operations as well as courts in regions, where active combats are, suspended all their activities.
For more information, please click here and hereSource: www. ukrpatent.org; www.inta.org; www.craneip.com Apr 21, 2022 (Newsletter Issue 5/22)Declaration of Article 15(5) of Madrid Protocol WithdrawnWIPO informs that Namibia has deposited a notification on February 16, 2022, withdrawing the below-mentioned declaration:
"In accordance with Article 14(5) of the Madrid Protocol (1989), the protection resulting from any international registration effected under the said Protocol before the date of entry into force of the said Protocol with respect to the Republic of Namibia cannot be extended to it" (see Madrid (Marks) Notification No. 157 of March 31, 2004).
For more information, please click here Source: www.wipo.int Apr 21, 2022 (Newsletter Issue 5/22)Trademark Office Accepts Oppositions until End of May 2022On March 28, 2022, the Indian Trademark Office, Controller General of Patents, Designs & Trade Marks (CGPDTM), published a public notice allowing any third party to file oppositions against trademarks applications published between November 18, 2019, and January 24, 2022, in the Trade Mark Journal until May 30, 2022, regardless of the current status of the contested application.
This follows the ruling of the High Court in Dehli Order dated March 21, 2022, in the case of Dr. Reddys Laboratories Limited & Anr v. Controller General of Patents Designs and Trademarks, W.P. (C)-IPD 4/2022 & CM 27/2022, wherein the Court issued the following directions:
1. The time limit for filing oppositions against trademarks whose opposition period would have expired after March 15, 2020, shall be extended until May 30, 2022;
2. Registration certificates for trademark applications against which no oppositions have been filed or received until May 30, 2022, shall remain valid; and
3. Registration certificates for trademark applications against which oppositions have already been filed or are filed by May 30, 2022, shall either not be issued or, if already issued, shall stand suspended until the Trademark Office decides the oppositions.
For more information, please see here and here
Source: S. S. Rana & Co., India; ZeusIP Advocates LLP (published at www.inta.org on April 20, 2022) Mar 31, 2022 (Newsletter Issue 4/22)
Online Trademark Registration System Updated
On February 15, 2022, the Taiwan Trademark Office (TIPO) updated the online trademark registration process and interface to improve usability. Three forms are now available for traditional trademark applications, amendments, and withdrawals.
In addition, TIPO plans to add colour, sound, and 3-D trademark applications, as well as divisional applications and applications for change prior to registration in the third and fourth quarters of 2022. Furthermore, the Office plans to include collective trademarks, certification marks, and collective membership marks as well.
Source: www.tipo.gov.tw
Mar 31, 2022 (Newsletter Issue 4/22)Draft Amendments to Trademark and Copyright Act ApprovedOn January 20, 2022, Taiwan's Cabinet approved draft amendments to the Trademark Act and Copyright Act to provide better protection for intellectual property right owners. The submission of these amendments by the TIPO is a necessary step for joining the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) trade pact.
The draft amendments would allow prosecutors to investigate a broader range of copyright or trademark infringement cases. For example, the draft amendments to the Trademark Act remove the word "knowingly" from the current law, meaning that even unintentional and negligent infringement can be considered infringement.
For further information, please click hereSource: www.moea.gov.tw Mar 31, 2022 (Newsletter Issue 4/22)Important Changes to IP SystemOn January 12, 2022, Singapore’s Parliament approved the Intellectual Property (Amendment) Bill 2021 to improve the intellectual property systems by enhancing business-friendliness, operational efficiency, and legislative and procedural clarity. It affects the Trade Marks Act, Registered Designs Act, Geographical Indications Act and Plant Varieties Protection Act. It is expected to be implemented in May 2022.
Key changes for trademarks are the following:
- Partial acceptance for national trademark applications will be permitted. This amendment will expedite the progress of applications that only face objections in relation to some of the goods or services claimed. This also aligns the practice in place for international applications designating Singapore.
- The time frame to "revive" applications that have been treated as withdrawn will be shortened from six months to two months. By this, applications will have a greater incentive to carefully monitor and act before the relevant deadlines. It also benefits prospective applicants that are waiting for the removal of earlier marks on the Register.
- The meaning of "earlier trademark" in the context of citation objections will be clarified to include expired marks that remain eligible for renewal or restoration.
- An opposition procedure for requests for correction of errors in applications or registrations concerning third parties (e.g., errors relating to the applicant's, proprietor's or priority details).
For more information, please see here and hereSource: www.ipos.giv.sg; www.dcc.com Mar 31, 2022 (Newsletter Issue 4/22)Amendments to Trademark ActOn February 3, 2022, the National Assembly promulgated amendments to the Trademark Act which introduces an expansion of the ways to prove “use” of registered trademarks, as well as the possibility of partial rejection and re-examination. The expanded scope of trademark use will take effect from August 4, 2022, while the introduction of partial rejection and re-examination from February 4, 2023. Amendments are the following:
Definition of "use of a trademark" expanded to cover online distribution of "digital goods"
The amended Trademark Act includes the provision of trademarked goods via a telecommunications network. Type of use may include uploading or providing subscription services for trademarked computer programs, transmitting e-books and digital files, and providing apps, e-coupons or emoticons via app stores.
Introduction of partial rejection
The amended Act permits partial rejection of applications. Examiners may refuse some of the designated goods/services while granting the registration of the application for the remaining specification. Further, applicants will be able to file an appeal with the IP Trial and Appeal Board (IPTAB) with respect only to the refused goods/services (as a whole, or in part), as opposed to the entire specification of designated goods/services.
Establishment of a re-examination
The revised Act introduces a re-examination system, where in straightforward cases applicants may request re-examination and simultaneously file an amendment to cure the rejection grounds. In this way, trial proceedings before the IPTAB can be avoided. A re-examination request needs to be filed within three months from the date of receipt of the rejection notice.
For more information, please see here Source: www.ip.kimchang.com Mar 31, 2022 (Newsletter Issue 4/22)New Trademark Examination Manual EffectiveThe Thai Department of Intellectual Property (DIP) published its final Trademark Examination Manual, which provides guidance to examiners on trademark examination in the areas where the Trademark Law leaves it to them. The Examination Manual aims to improve the practice of trademark examination in Thailand and align it with the international standards of trademark offices. It became effective from January 17, 2022, onwards with all pending and newly filed trademark applications.
The Examination Manual contains eight sections on the trademark examination procedure, starting with the formal examination of the trademark application, the issuance of the office action, the publication of the trademark, and ending with the trademark opposition. Some of the most important changes in examination practice on the issue of distinctiveness.
The Examination Manual is expected to be followed and complied with by all Thai trademark registrars, but it is not legally binding on registrars.
For more information, please check here
Source: www.kass.com.my; LawPlus Ltd., Thailand Mar 31, 2022 (Newsletter Issue 4/22)
Publication of Trademark Related Matters in Official Gazette Only
The Trademark Office announced that the publication of trademark related matters, including registration, renewal, recordal, and amendments will henceforth be published only in the Official Gazette, eliminating local publication procedures in local newspapers.
This new practice has been applicable in the UAE starting from March 2022.
Source: www.agip.com
Mar 31, 2022 (Newsletter Issue 4/22)
New Requirements for Trade Name Registration
Pursuant to Ministerial Decision No. 4 of 2022 on the registration of trade names in Arabic, it is now possible to register a trade name in both Arabic and Latin characters. The Latin name should be a synonym for the Arabic translation or a direct transliteration of that name.
Source: www.agip.com
Feb 24, 2022 (Newsletter Issue 3/22)Japan-Taiwan Concordance List of Similar Group Codes PublishedTh Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
For information please check JPO's website hereSource: www.jpo.go.jp Feb 24, 2022 (Newsletter Issue 3/22)Japan-Taiwan Concordance List of Similar Group Codes PublishedThe Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2022 (NCL11-2022).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
For information please check JPO's website hereSource: www.jpo.go.jp Feb 24, 2022 (Newsletter Issue 3/22)
Accession to Geneva Act of the Lisbon Agreement
On December 24, 2021, the Russian Federal Law On the Accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was approved. Accordingly, the Lisbon Agreement is expected to enter into effect by 2023 in Russia.
The accession of the Russian Federation to the Geneva Act will increase the protection of regional brands, create new opportunities for the regions’ economic development and support of local manufacturers, and ensure further integration of the Russian Federation in the global systems of intellectual property protection.
Source: www.ip-coster.com; www. en.kremlin.ru
Feb 24, 2022 (Newsletter Issue 3/22)Official IP Fees AmendedAccording to Resolution No. 792 "For determination of the base value amount" in Belarus, the base value constitutes 32 Belarusian rubles, which is 3 rubles more than last year. This Resolution entered into force on January 1, 2022.
In regard to these amendments, official fees charged for the actions related to the registration and maintenance of validity of the types of IP rights are increased correspondingly.
The official fee for filing a trademark application is now BYN 1,216 for one class and BYN 160 for each additional class. The registration fee is BYN 608.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Feb 24, 2022 (Newsletter Issue 3/22)Deadline for TM Renewal in AdenThe Ministry of Industry and Trade in Aden has published a new circular in the Official Gazette No. 27 that allows holders of Yemeni Sana'a trademark registrations that expired in 2020 to submit the renewal of their trademark registrations before March 31, 2022, to obtain a legal extension of their trademarks to Yemen - Aden. This is in accordance with the ministerial decision
Please be reminded that the Trademark Office in Aden works independently from the Trademark Office in Sana’a.
For further information, please check the circular here
Source: JAH & Co. IP, Qatar Feb 24, 2022 (Newsletter Issue 3/22)Accession to The Hague Convention ApprovedThe Council of Ministers of Saudi Arabia enacted the Royal Decree M/40 dated 26/05/1443 H approving the Kingdom’s accession to the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille). It is expected that the legal formalities for accession will be completed during the year.
Under current practice, official documents such as Powers of Attorney must be legalized in order to be recognized by the authorities in Saudi Arabia.
Source: JAH & Co. IP, Qatar Feb 10, 2022 (Newsletter Issue 2/22)
Changes to List of Designated Goods and Services for TM Registration
In response to the latest version of Nice Classification NCL (11-2022), the Taiwan Intellectual Property Office (TIPO) has amended its own list of Names of Designated Goods and Services for Trademark Registration, effective January 1, 2022. The changes include 45 revisions and 556 additions. As for amends done to class/subclass names or notes, there are 4 additions, 18 revisions, and 8 removals.
Those who use the electronic trademark application system after January 1, 2022, are advised to download the updated list featuring all incorporated changes.
Source: www.tipo.gov.tw
Feb 10, 2022 (Newsletter Issue 2/22)Accession to Hague SystemOn February 5, 2022, the Government of the People’s Republic of China deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement. The Act will enter into force in China on May 5, 2022.
It should be noted that the 1999 Act will not be applied in the Hong Kong Special Administrative Region or the Macao Special Administrative Region of the People’s Republic of China until otherwise notified by the Government of the People’s Republic of China.
China’s instrument of accession includes several declarations which can be seen hereSource: www.wipo.int Feb 10, 2022 (Newsletter Issue 2/22)Official Fees IncreasedThe Afghan Ministry of Industry and Commerce has increased the official fees for intellectual property services. The official fees for trademarks, patents, utility models and designs have been increased at an average rate of 100% for each fee.
The official fee for the application until registration of a trademark is now 180 USD.
Source: Rabin Law Services, Afghanistan Feb 10, 2022 (Newsletter Issue 2/22)
Accession to Nice Agreement
On January 18, 2022, the Government of the United Arab Emirates joined the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
The Agreement will enter into force, with respect to the United Arab Emirates, on April 18, 2022.
Source: www.wipo.int
Feb 10, 2022 (Newsletter Issue 2/22)Identity Verification for USPTO.gov Account Holders to Be Mandatory SoonOn January 8, 2022, the United States Patent and Trademark Office (USPTO) introduced identity verification for USPTO.gov account holders using the Trademark Electronic Application System (TEAS) and TEAS international (TEASi).
There are two different methods for customers available to verify their identities:
- paper identity verification process
- online via ID.me
The USPTO advises that starting April 9, 2022, identity verification will be required for USPTO.gov account holders to file through TEAS and TEASi.
For more information, please click hereSource: www.uspto.gov Feb 10, 2022 (Newsletter Issue 2/22)
Modification of 3 Main IP Laws Proposed
In October 2021, the Council of Ministers of the Spanish Government authorised the text of the preliminary draft law prepared by the Spanish Patent and Trademark Office (SPTO) amending the following main intellectual property laws:
1. Trade Mark Act 17/2001 of December 7, 2001;
2. Legal Protection of Industrial Design Act 20/2003 of July 7, 2003; and
3. Patents Act 24/2015 of July 24, 2015.
Some of the proposed amendments to the Trademark Law are the following:
- New exceptions have been introduced to the revocation of a trademark on the grounds of a lack of renewal where there are registered seizures, a claim action or bankruptcy proceedings underway.
- In invalidity and revocation proceedings in which the owner of the invalid or revoked trademark has acted in bad faith, the action for compensation for damages must be filed before the civil court.
- The articles referring to grounds of refusal for collective and certification trademarks will be applicable to international trademarks as well.
- In the transformation of EU trademarks, the requirements for signs will be brought into line with those established for applications of national trademarks or trade names.
- The requirement for graphic representation has been eliminated for trade names.
- The new procedure, brought about by reform in 2018, is being introduced, in addition to a legal power of the Minister of Industry, Trade and Tourism to modify the maximum terms of resolution related to distinctive sign procedures, upon proposal by the SPTO.
- Following procedural changes introduced in the 2018 reform, the amount of the opposition fee is updated to reflect the service now provided.
It is expected that the law amending the three main IP laws will be approved before the end of 2022.
Source: www.ga-ip.com; www.brandwrites.law
Jan 27, 2022 (Newsletter Issue 1/22)Notification on Licence Recordal and Division/Merger of International RegistrationsOn January 6, 2022, the Office of the United Arab Emirates has notified WIPO in accordance with Rules 20bis(6)(b), 27bis(6) and 27ter(2)(b) of the Regulations under the Madrid Protocol.
As a result:
- a license shall, in order to have effect in that Contracting Party, be recorded in the Register of the Office of the United Arab Emirates;
- that Office of UAE will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).
For further information, please refer to Information Notice No. 1/2022 hereSource: www.wipo.int Jan 27, 2022 (Newsletter Issue 1/22)
Accession to Madrid Protocol
On December 27, 2021, WIPO notified the deposit by the Government of Jamaica of its instrument of accession to the Madrid Protocol.
The said instrument contained the following declarations:
- The time limit for refusal of a trademark is extended to 18 months. Notifications of refusal based on opposition are possible after the expiry of this period.
- Jamaica wishes to receive an individual fee when it is designated in an international application, in a subsequent designation, and with respect to renewal of an international registration. The amount will be determined in a separate notice.
- Any provisional refusal notified to WIPO will be subject to a review by the Office of Jamaica, and the decision taken may be the subject of a further review or appeal before that Office (Rule 17(5)(d) of the Regulations under the Madrid Protocol).
The Madrid Protocol (1989) will enter into force, with respect to Jamaica, on March 27, 2022.
Source: www.wipo.int
Jan 27, 2022 (Newsletter Issue 1/22)New Trade Marks Act PublishedOn August 20, 2021, the new Fijian Trademarks Act was published, replacing the Trade-Marks Act 1933 and the Merchandise Marks Act 1933 once it comes into force.
Some of the main changes are the following:
- Adoption of the Paris Convention which will allow claims for convention priority.
- Introduction of the Nice Classification system of goods and services to avoid the current need to re-classify goods to fit the old UK based system dating from the 1930’s.
- Allowance of Multiple class coverage.
- Introduction of non-traditional trademarks (such as colours, smells, sounds and tastes).
- Removal of provisions to allow for re-registration of UK trademark registrations.
- Adoption of a 10-year renewal period, bringing Fiji into line with the international standard.
- Mandatory requirement that consent to registration be accepted from owners of relative rights.
- Provisions for recognition of Geographical Indications.
- Clearer provisions on status of expired trademark rights.
- The onus will shift to the owner of a trademark to prove use in non-use revocation actions, but the 5-year grace period remains.
- Allowance made for future accession to Madrid Protocol and designation of Fiji.
For more information, please check here. The Act can be accessed here
Source: AJ Park, New Zealand Jan 27, 2022 (Newsletter Issue 1/22)Operating Procedures for Foreign Users' Signatures RevisedThe Japan Patent Office (JPO) revised its regulations for procedural documents and proving documents to be submitted to the JPO, abolishing the requirement for using a seal to these documents from January 1, 2022, except for some procedures.
When using a seal for which the JPO continues to require the use of a seal (procedures to which damage caused by falsifying documents is significant), a seal must be used where “personal identity can be verified.”
The JPO revised its operating procedures for foreign users' signatures to proving documents to require foreign users to verify their personal identity. Applicants need to submit any of the following:
- Description in applications, stating that “the intention of transferors was confirmed” by representatives of transferors or transferees
- Submission of assignments with documents certifying the authenticity of signature
- Submission of signature certificates
- Visit of transferors to JPO to confirm identity
For more information, please see hereSource: www.jpo.go.jp Jan 27, 2022 (Newsletter Issue 1/22)Industrial Property Law AmendedThe Albanian Industrial Property Law was amended to introduce new provisions on trade secrets, trademarks, and the Internal Market Inspectorate. It entered into force on August 22, 2021.
Trade Secrets
The amended law defines trade secrets, sets out the rules for their lawful and unlawful acquisition, use and disclosure, as well as the rules for maintaining their confidentiality during and after legal proceedings, aligning with the Directive (EU) 2016/943. The law also provides trade secret holders with a range of measures that can be used in the event of misappropriation of trade secrets, including compensatory damages.
Trademarks
The amendments provide that a trademark registration may be divided into two or more registrations. Previously, it was only possible to divide a trademark application. In addition, the Intellectual Property Office will now reject a trademark application during substantive examination if the dominant element of the trademark is considered to be non-distinctive, even if the applicant requests a disclaimer of such element. This was previously not explicitly defined in the law.
Internal Market Inspectorate
The amendments to the IP Law also define the role and duties of the Internal Market Inspectorate (IMI), whose main responsibility is to ensure the safety of non-food consumer products by instigating internal market inspections. The role of IMI in IP right enforcement was previously not defined. Under the amended law, right holders can file a formal request to the IMI for seizure of goods that infringe their registered IP rights once they become aware of such goods on the market.
For more information, please see hereSource: www.petosevic.com Jan 27, 2022 (Newsletter Issue 1/22)Examination Criteria on Likelihood of Confusion RevisedThe Taiwan Trademark Office (TIPO) has revised the Examination Criteria on Likelihood of Confusion to provide trademark examiners with even more specific guidelines on evaluating the likelihood of confusion when examining trademark applications. In doing so, TIPO has referred to the examination guidelines of the EUIPO, the JPO, the USPTO, and the judicial practice of Taiwan. The amended entered into force on October 27, 2021.
The revision has laid down principles for evaluating the degree of distinctiveness of trademark elements, assessing each trademark as a whole, facilitating comparisons between individual parts of compound word marks, and judging the similarity between existing words/phrases and phonetic characters, comprehensively illustrated with examples.
An additional criterion, “channels of distribution or points of sale,” was included in the list of determining factors for the degree of similarities between goods and services. Several determining factors were modified, for example, whether the business of the proprietor of the earlier registered trademark pursues a diversification strategy for example.
For more information, please check hereSource: www.tipo.gov.tw Jan 27, 2022 (Newsletter Issue 1/22)Madrid E-Filing Available NowOn December 20, 2021, the Ukrainian Intellectual Property Institute (UKRPATENT) provided trademark applicants with acess to the Madrid e-filing service via its website. Trademark owners have the possibility to file international applications online.
In addition, trademark owners can list goods and services and check the acceptability of terms across 40 contracting parties of the Madrid Protocol via the Madrid Goods & Services Manager.
For more information on how to use the e-filing service, please click hereSource: www.ukrpatent.org Dec 16, 2021 (Newsletter Issue 18/21)First Mediation Rules for International IP Disputes ReleasedOn 29 October, the Mediation Center of the China Council for the Promotion of International Trade (CCPIT) released Mediation Rules for Intellectual Property Disputes.
It is the first set of rules in China aimed solely at the resolution of international IP disputes. The rules, comprised of five chapters, seek to align with international mediation principles. Based on the unique nature of IP disputes, the rules allow for technical investigations during the mediation processes.
Experts and institutions can be hired to provide technical consultation for technology-centered cases. Under the rules, parties involved in disputes are able to pick the language of their choice for mediation and even use a combination of alternative dispute resolution methods such as litigation and arbitration to protect their rights.
The rules became effective on November 1, 2021.
For more information, click here (Chinese only).Source: www.gov.uk; www.sbj.cnipa.gov.cn Dec 16, 2021 (Newsletter Issue 18/21)Guidelines for Legal Protection and Enforcement of Chinese Trademarks in EnglishOn November 30, 2021, the China National Intellectual Property Administration (CNIPA) released the Guidelines for the Legal Protection and Enforcement of Chinese Trademarks in English. The UK Intellectual Property Office (UK IP Office) issued corresponding guidelines on UK intellectual property in English and Chinese.
The Guidelines were released to deepen the understanding of the Chinese and British intellectual property systems by enterprises of the two countries.
All Guidelines are available here and the Chinese Guidelines in English hereSource: www.gov.uk; www.cnipa.gov.cn; www.slwip.com Dec 16, 2021 (Newsletter Issue 18/21)IP Office Provides Madrid e-FilingAs of December 2, 2021, the Turkish Patent and Trademark Office (TÜRKPATENT) is giving access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
An integrated key feature includes in-app access to the Madrid Goods & Services Manager that allows users to check the classification of terms in their list of goods and services.
More information on the notice, please click hereSource: www.wipo.int Dec 16, 2021 (Newsletter Issue 18/21)Extensive Legislative Reform - New Trademark Law IssuedThe United Arab Emirates (UAE) is undergoing a major legislative reform. New draft laws covering more than 40 laws have been introduced in the UAE, including the Trademark Law.
The UAE has issued a new Federal Trademarks Law No. 36 of 2021 (New Law), which will come into effect on January 2, 2022. The New Law will completely replace Federal Law No. 37 of 1992.
Some of the changes are as follows:
- Non-traditional trademarks such as 3D trademarks, single colour, holograms, sound and smell can be registered.
- Geographical indications can be registered.
- Penalties for trademark infringement have been strengthened.
- A Complaints Committee has been established to hear all objections to decisions issued by the Trademarks Office with respect to applications, oppositions, and cancellations.
- All decisions issued by the Complaints Committee can be appealed before the Federal Court of Appeal instead of the Court of First Instance.
- The New Law regulates the rights of a prior user of a trademark to cancel a trademark.
- The Ministry of Economic Affairs now receives requests for cancellation of trademarks.
- Trademarks registered in bad faith can be excluded, which is in line with the Paris Convention.
- Trademark licences no longer have to be registered with the Ministry under the New Law.
The implementing regulations provide for detailed procedures. They have yet to be defined and issued.
More information can be seen hereSource: www.tamimi.com Dec 16, 2021 (Newsletter Issue 18/21)
Trademark and Geographical Indications Law Amended
Several amendments to the Mongolian Trademark and Geographical Indications Law (TML) were introduced and came into force on September 23, 2021.
Some of the amendments are the following:
- A two-phase opposition procedure has been introduced.
- The Intellectual Property Office of Mongolia (IPOM) now publishes trademark applications in the Official Journal after the formal examination.
- After the publication of the trademark application in the Official Journal, an interested party may submit an opposition to IPOM within 3 months from the filing date (Art. 8.10 TML), with the possibility of extending this period by 2 months (Art. 8.11 TML).
- For international applications, the opposition period is five months from the date of the publication of the MN (Mongolia) designation in the WIPO Gazette of the International Marks (Art. 11.9 TML).
- IPOM shall perform the substantive examination within 9 months from the filing date of the trademark application, which period may be extended by 6 months if necessary.
- Bad faith has been added to the list of grounds for refusal of registration (Art. 5.2.11 TML).
- The TML now stipulates that a trademark may be invalidated if the rights holder cannot provide evidence of reasonable efforts to use the trademark in the marketplace for a period of five years (Art. 33.1.3 TML).
Source: www.lehmanlaw.mn; www.ip-coster.com
Dec 02, 2021 (Newsletter Issue 17/21 )New Guidelines for Trademark Examination and Trial On November 22, 2021, China’s National Intellectual Property Administration (CNIPA) released the Guidelines for Trademark Examination and Trial. They explain Article 4 of the Chinese Trademark Law, which provides criteria for identifying malicious applications.
These new guidelines and other measures, such as the ‘Special Action Plan to Combat Malicious Trademark Squatting’ issued by CNIPA in March 2021, are intended to further reduce trademark squatting in China.
The guidelines come into effect on January 1, 2022.
For more information, please check hereSource: www.slwip.com Dec 02, 2021 (Newsletter Issue 17/21 )New Requirements when Applying for Well-known Trademark Status China’s National Intellectual Property Administration (CNIPA) introduced a new requirement for applying for well-known trademark status from September 1, 2021. Applicants are required to submit a commitment letter in which they provide assurance that there is no malicious conspiracy or other dishonest acts with another party and that there is no other illegal means to defraud the protection of well-known trademarks.
In addition, applicants must also promise that the relevant information and evidence submitted in the opposition/review of opposition/invalidation actions is legitimate, accurate and complete. They must attest that the documents have not been falsified by e.g., forgery, alteration, concealing evidence, or instigating, bribery or coercion to commit perjury.
Further, the commitment letter must be signed by both the applicant and the representing trademark attorney.
For more information on the notice, please click here (Chinese only).Source: www.gov.uk; www.cnipa.gov.cn Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs
On November 3, 2021, the WIPO notified the deposit by Ghana of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement).
The Geneva Act of the Lisbon Agreement enters into force, with respect to the Republic of Ghana, on February 3, 2022.
Source: www.wipo.int
Dec 02, 2021 (Newsletter Issue 17/21 )Streamlining Hague System Procedures when Designating JapanOn November 4, 2021, WIPO informs that applicants of international design applications designating Japan can now submit a supporting document in the case of exception to lack of novelty, and/or a copy of a priority document directly to WIPO through eHague.
Applicants may also use form DM/1, Annex II or V of the Hague System (see forms here). It is important that the documents must be sent at the time of filing the international design application to WIPO.
WIPO will then forward these documents to the Japan Patent Office (JPO).Source: www.wipo.int Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Hague System
On November 10, 2021, WIPO notifes the deposit by Jamaica of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act enters into force, with respect to Jamaica, on February 10, 2022.
Source: www.wipo.int
Dec 02, 2021 (Newsletter Issue 17/21 )USPTO Implements Trademark Modernization ActThe United States Patent and Trademark Office (USPTO) has published implementing regulations for the Trademark Modernization Act (TMA) of 2020.
For individuals, businesses, and the USPTO it becomes easier to clear away unused registered trademarks from the federal trademark register. Further, the USPTO can move applications through the registration process more efficiently.
The final rule
- establishes ex parte expungement and re-examination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made;
- provides for a new non-use ground for cancellation before the Trademark Trial and Appeal Board (TTAB or Board);
- establishes flexible Office action response periods;
- amends existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable;
- sets fees for petitions requesting institution of ex parte expungement and re-examination proceedings as well as for requests to extend Office action response deadlines;
- amends the provisions on the suspension of USPTO proceedings and attorney recognition in trademark matters.
A new rule is added to address procedures regarding court orders cancelling or affecting registrations.
Most revisions to the Trademark rules take effect on December 18, 2021, some already came into force on December 1, 2022, such as the shorter response time for official acts. Petitions requesting institution of proceedings for re-examination or expungement will be accepted on or after December 27, 2021.
For more detailed information, visit the USPTO website hereSource: www.uspto.gov Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Paris Convention
WIPO notifies the accession of Kiribati to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention).
The Paris Convention will enter into force, with respect to the Republic of Kiribati, on February 5, 2022.
Source: www.wipo.int
Dec 02, 2021 (Newsletter Issue 17/21 )Trademark Law AmendedOn August 20, 2021, Uzbekistan adopted amendments to the Law on Trademarks, Service Marks and Appellations of Origin.
Important novelties are the following:
- Expedited examination of trademark applications:
Expedited examination of applications should be completed within one month from the formal examination decision date. Expedited examination is an alternative to regular substantive examination. A request for expedited examination must be filed and additional fees apply. In addition, the applicant must order a trademark availability search.
- Third-party observations:
The Intellectual Property Agency (IPO) is required to publish information on new trademark filings on its official website within one working day from the application filing date. Interested parties may then submit written observations against filed applications.
- Exclusive trademark rights starting from the registration date:
The information about a trademark registration is recorded in the IPO’s register and published on the IPO’s website on the date of trademark registration. Previously, it was unclear whether trademark rights started on the date of publication or on the date of registration.
The amendments entered into force on August 21, 2021.
For more detailed information, please click hereSource: www.petosevic.com Nov 18, 2021 (Newsletter Issue 16/21)
Customer Service Reopened
The Finnish Patent and Registration Office (PRH) opened its customer service in Helsinki on October 1, 2021, after being closed due to the coronavirus.
The service is open from Monday to Friday between 12.00 and 16.15 until further notice.
There are instructions for walk-in customers at the customer service entrance (Sörnäisten rantatie 13 C).
Source: www.prh.fi
Nov 18, 2021 (Newsletter Issue 16/21)Amendments to Trade Marks Rules EffectiveOn September 10, 2021, the Intellectual Property Office of Singapore (IPOS) published the Circular No. 5/2021 to introduce the Amendments to Subsidiary Legislation and Electronic Filing and Service of Documents.
IPOS informs that amendments have been made to the Trade Marks Rules (TM Rules) and Trade Marks (International Registration) Rules (TM(IR) Rules) in order to enhance dispute resolution processes, and to streamline trademarks operational processes. These amendments take effect on October 1, 2021.
Key amendments are provided below:
- Registrar may shorten evidential deadlines:
The Registrar may shorten evidential deadlines after giving parties an opportunity to be heard under the new Rule 31(1A) of the TM Rules.
- Registrar may consolidate proceedings on own accord:
The Registrar may consolidate proceedings on own accord after giving parties an opportunity to be heard under the new Rule 81C of the TM Rules.
- Removal of form and fee for Registrar's Certificate of Taxation:
The Registrar is allowed to issue a Certificate of Taxation without the need for the party to file Form HC2 and pay the relevant fee under the amended Rule 76 of the Trade Marks Rules.
- Removal of mandatory provision of translation and/or transliteration:
Rule 20 of the TM Rules is amended to remove the mandatory requirement to provide a translation and/or transliteration for foreign characters in a trademark. However, the Registrar may still require a translation and/or transliteration to be provided, such as in cases where the foreign characters cannot be identified. This amendment follows from the Registry’s easing of translation and/or transliteration requirements, which was highlighted in Trade Marks Circular No. 04 of 2019.
- Clarification of period that a holder of an International Registration designating Singapore is not entitled to damages, account of profits or statutory damages:
Rule 8(5) of the TM(IR) Rules is amended to clarify the period where a person is not entitled to damages, an account of profits or statutory damages in respect of any infringement of the International Registration designating Singapore (IR) when a person becomes the holder of an IR (or protected IR) by virtue of a notifiable transaction made under that Rule.
For further information, please check the full list of amendments made to the TM Rules and TM(IR) Rules hereSource: www.ipos.gov.sg; www.bakermckenzie.com Nov 18, 2021 (Newsletter Issue 16/21)Important Changes to Design Law AheadOn September 10, 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent. It makes important changes to design law in Australia. In particular, it introduces a 12-month grace period, bringing the law in line with other jurisdictions that allow such a period. It also simplifies the design registration process. Most of the amendments come into force on March 10, 2022.
For further information, please check hereSource: www.ipaustralia.gov.au Nov 18, 2021 (Newsletter Issue 16/21)
New Electronic Payment Features
The Patent Office of the Republic of Bulgaria has introduced new electronic payment features as of September 10, 2021, allowing online payments not only for the electronic filing of IP objects, but also for the electronic filing of requests to take follow-up action.
With each application submitted electronically, the applicant receives a notification of the liabilities automatically calculated on the basis of the tariff and the applicant can make an online payment which is immediately taken into account in the authority's systems.
Source: www.bpo.bg
Nov 18, 2021 (Newsletter Issue 16/21)
Trademark Examination Guidelines Extended
The Turkish Patent and Trademark Office has added a new chapter to the guidelines on examination standards for trademark applications. The new chapter concerns the substantive examination standards for the assessment of confusing similarity.
The new chapter covers the topics below:
- the concept of ‘likelihood of confusion’;
- the similarity of goods and services taking into account the role of the Nice Classification;
- the relevant consumers and their level of attention;
- the distinctiveness of the prior trademark;
- the comparison of the signs from an aural, visual and conceptual point of view;
- all the factors to be taken into account in determining the likelihood of confusion (i.e., the similarity of goods/services, the relevant consumers and their attention level, the distinctiveness of the prior trademark and the comparison of the signs); and
- frequently arising situations when assessing the likelihood of confusion between certain types of mark (e.g., names and surnames, house marks, pharmaceutical marks, slogan marks, one-letter marks, two or three-letter marks, colour marks and three-dimensional marks).
The guidelines now consist of 681 pages and include several examples of decisions from the Turkish Patent and Trademark Office, Re-examination and Evaluation Board and courts, as well as decisions from the European Union Intellectual Property Office and Court of Justice of the European Union.
Source: www.gun.av.tr
First published by WTR, Sept. 22, 2021
Nov 18, 2021 (Newsletter Issue 16/21)Companies that Failed Filing Financial Statements Are Removed from Trade RegisterOn September 22, 2021, the Finnish Patent and Registration Office (PRH) removed limited liability companies and co-operatives from the Finnish Trade Register that had not filed their financial statements despite several reminders in 2021.
The PRH's right to deregister companies that have not filed their financial statements is based in each case on either the Finnish Limited Liability Companies Act (chapter 20, section 4) or the Finnish Co-operatives Act (chapter 23, section 4).
Companies that have been removed from the register are out of business. They may apply for re-registration in the Finnish Trade Register. For instructions on how to apply, click here
For more information on the announcement, please click hereSource: www.prh.fi Nov 18, 2021 (Newsletter Issue 16/21)
Position Mark Now Registerable
As of October 1, 2021, applications for position marks are accepted for filing with the Brazilian Patent and Trademark Office (BPTO) as stipulated per Ordinance published in the Brazilian Official Gazette on September 21, 2021.
Pursuant to the Ordinance, a position mark is now protectable by filing an application with the BPTO, adding position marks to other types of marks already recognized such as word, composite, figurative, and three-dimensional marks.
A position mark in Brazil is defined as a "distinctive set" that enables the goods or services to which the mark relates to be distinguished from similar or identical marks, provided that the sign is located in a unique and specific position of a support, and it can be dissociated from a technical from a technical or functional effect on the goods themselves.
Since there are no special forms for position mark applications yet, applicants of new position marks must file using the electronic forms for three-dimensional marks, indicating that the mark is a position mark.
In addition, pending trademark applications can now be converted into position marks if a corresponding application is filed with the BPTO. Pending applications that qualify as position marks can do so within 90 days from October 1, 2021. The examination of position marks is to take place when the BPTO has made the relevant adjustments to the system.
Source: www.ip-coster.com
Nov 18, 2021 (Newsletter Issue 16/21)
Changes to Patent and Designs Law
The Federal Law No. 11 of 2021 on the Regulation and Protection of Industrial Property Rights comes into force on November 30, 2021, and introduces numerous amendments to the patent, utility model and design regimes in the UAE.
The most important changes include the following:
- A novelty grace period for disclosures of information by the inventor or others obtaining information directly from the inventor(twelve months from the filing date for patents, utility models and designs);
- Substantive examination (novelty examination) for designs;
- Procedure to expedite the examination of patents and utility models
- Provisions for filing divisional applications for patents and utility models;
- Extension of term of design protection from 10 years to 20 years;
- Executive Regulations shall define requirements for procedures for examination, publication, annuities, restoration, grievances, etc.;
- Grievance and Objections Committee is established to hear requests for re-examination (by a third party) and grievances relating to registration of a patent, utility model, and design. Infringement actions appear to be referred directly to court;
- UAE Patent Office will act as receiving office for international applications (PCT Applications) in accordance with the procedures to be set out in the Executive Regulations;
- Important changes in the rights of employee inventors and employers.
The accompanying Executive Regulations shall provide further details and guidance on how many of these changes will be implemented.
Source: www.rouse.com
Nov 18, 2021 (Newsletter Issue 16/21)
Switch to Electronic Trademark Registration Certificates
On October 12, 2021, the China’s National Intellectual Property Administration (CNIPA) announced that trademark registration certificates are no longer be issued from January 1, 2022.
For trademark applications submitted via paper filing, the CNIPA is going to issue a Notice with a URL and QR code where the applicant can download the electronic trademark registration certificate. For the application filed via the e-filing system, the registration certificate can be viewed and downloaded from the CNIPA's online service system.
During the transition period, CNIPA is issuing both paper and electronic registration certificates from October 15, 2021, to December 31, 2021.
Source: www.chinaiplawupdate.com; www.rouse.com
Nov 18, 2021 (Newsletter Issue 16/21)
Accession to ARIPO
On August 26, 2021, Seychelles deposited its Instrument of Accession to ARIPOl. Seychelles becomeson the 19th member state party to the Harare Protocol (patents, industrial designs and utility models).
Seychelles becomes a member of ARIPO with effect from January 1, 2022.
Source: www.aripo.org
Oct 20, 2021 (Newsletter Issue 15/21)
Slovak City Certified as Authenticity
On September 29, 2021, the city of Banská Bystrica (Slovak Republic) became the fifth certified ‘Authenticity’, following the Authenticities of Thessaloniki, Sofia, Plovdiv and Mykonos.
Authenticities is an initiative designed to empower authorities at a local level to engage citizens and partner organisations across the EU in the fight against counterfeiting, with a view to creating a European Network of Authenticities.
This European Cooperation Project aims to raise awareness of both the value of IP, and the damage caused by counterfeiting in European cities among local policymakers, businesses and, ultimately, the European public.
Source: www.euipo.europa.eu
Oct 20, 2021 (Newsletter Issue 15/21)Accession to Madrid ProtocolOn September 28, 2021, the Government of the United Arab Emirates deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that the United Arab Emirates wish to receive an individual fee when they are designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amount of the individual fees shall be announced in a separate Information notice.
The Madrid Protocol enters into force, with respect to the United Arab Emirates, on December 28, 2021.
For further information, please refer to Information Notice No. 15/2021.Source: www.wipo.int Oct 20, 2021 (Newsletter Issue 15/21)Procedure for Registration of Medical Devices SimplifiedAs of June 1, 2021, in accordance with the Presidential Decree of the Republic of Uzbekistan No. UP-6221, dated May 5, 2021, the simplified procedure of State registration for medical devices becomes possible.
Medical devices that have been registered with the following foreign organizations shall be subject to the simplified procedure:
- Food and Drug Administration (FDA), USA
- Bodies authorized to issue the European Certificate of Conformity (CE), European Union
- European Medicines Agency (EMA), European Union
- Pharmaceuticals and Medical Devices Agency (PMDA), Japan
- Ministry of Food and Drug Safety (MFDS), Republic of Korea
- Medicine and Healthcare Products Regulatory Agency (MHRA), United Kingdom
Medical devices and their components certified under the requirements of the above organizations during the State registration in the Republic of Uzbekistan, shall not be tested in vitro and shall be duly registered within 15 working days after filing an application for registration.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine and www. pharmprom.ru Oct 20, 2021 (Newsletter Issue 15/21)Labelling of Medicines and Footwear Becomes MandatoryKazakhstan introduces mandatory digital labelling of footwear and medicines.
On November 1, 2021, Kazakhstan starts the mandatory digital labelling of footwear. The production and import of unlabelled shoes are prohibited from this date, but retailers are able to sell unlabelled footwear until November 1, 2022. All manufacturers and importers have to use the Labelling System and enter information about their goods in order to generate Data Matrix codes. These codes are then applied to the product using a sticker or a label. Imported products must be labelled before they go through the customs procedure – either at the production site in another country or at a customs warehouse in Kazakhstan.
The mandatory digital labelling of medicinal products is introduced on January 1, 2022. The implementation phases are determined by the Kazakh Ministry of Health. A pilot project is currently taking place to allow pharmaceutical companies to test the labelling procedure before it becomes mandatory. Four Kazakh pharmaceutical manufacturers, one importer, two distributors, five pharmacies and eight medical institutions, as well as the state-run medicine distributor SK-Pharmacy LLP, are participating in the project. Since the project's launch in September 2019, nearly 100,000 packages of medical devices have been digitally labelled.Source: www.petosevic.com Oct 20, 2021 (Newsletter Issue 15/21)Official Fees IncreasedOn August 5, 2021, the Minister of Justice announced new official fees for trademarks, industrial designs and patents. The new official fees were published in the Official Gazette No. 1917 of 2021 and became effective on August 8, 2021, for all new and pending applications.
Source: JAH & Co. IP, Qatar Oct 20, 2021 (Newsletter Issue 15/21)
Official Fees Changed
On September 10, 2021, the Official Notice No. DG-0014-2021 informed that applicable official fees for Industrial Property matters in Venezuela have been modified.
The new official fees are applicable immediately, as of September 13, 2021, for all new or pending matters filed before the Trademark Office.
Source: www.bentata.com
Oct 20, 2021 (Newsletter Issue 15/21)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs
On August 31, 2021, the WIPO notified the deposit by Switzerland of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act).
The Geneva Act of the Lisbon Agreement enters into force, with respect to Switzerland, on December 1, 2021.
Source: www.wipo.int
Oct 20, 2021 (Newsletter Issue 15/21)
New Mailing Address for USPTO Deposit Account Replenishments
The United States Patent and Trademark Office (USPTO) has issued a final rule to amend the rules of practice to update the address for the replenishment of a deposit account by mail.
From December 15, 2020, through December 14, 2021, deposit account replenishments addressed to the old address are forwarded to the new address. Deposit account replenishments submitted electronically are not affected by these mailing address changes.
Source: www.uspto.gov
Oct 20, 2021 (Newsletter Issue 15/21)CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIs On May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021 (Newsletter Issue 15/21)Trademark Enforcement Matters Assigned to SAIPPursuant to Ministerial Decree No. 496 of 2018, the Ministry of Commerce has delegated trademark enforcement matters to the Saudi Intellectual Property Authority (SAIP).
As a result, as of August 15, 2021, trademark legal actions may be pursued through SAIP’s platform www.saip.gov.sa and its online portal.
Source: JAH & Co. IP, Qatar Oct 20, 2021 (Newsletter Issue 15/21)Common Practice on Graphic Representation of Designs (CP6)The Costa Rican IP Office 'Registro Nacional' found common ground with the criteria developed under the Common Communication on the Common Practice – Graphic Representation of Designs (CP6).
The practice paper provides a clear and comprehensive explanation of the principles on which the practice of the IP Office of Costa Rica and the IP Offices of the European Union Intellectual Property Network is based, particularly on how to use appropriate disclaimers, types of views and how to represent designs on a neutral background. It serves as a reference to users and examiners of the IP Offices involved.
The practice paper is available in Spanish and English and divided into two parts: the first summarises the criteria, while the second provides a full explanation of the different criteria applicable in each case.Source: www.euipo.europa.eu Oct 20, 2021 (Newsletter Issue 15/21)Common Practice on Absolute Grounds for Refusal (CP3)The Industrial Property Office of the Business Development Agency of the Principality of Monaco (MCIPO) has published a practice paper on the examination of absolute grounds for refusal for figurative trademarks with purely descriptive words or expressions.
The publication aims at increasing transparency, legal certainty, and predictability for the benefit of examiners and users alike. It has been tailored-made to the specificities of MCIPO, providing an overview of MCIPO quality standards for applications received electronically and on paper.
The practice paper is available in French and English and divided into two parts: the first part summarises the criteria, while the second part provides a complete explanation of the different criteria applicable in each case.Source: www.euipo.europa.eu Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIsOn May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Oct 20, 2021 (Newsletter Issue 15/21)
Administrative Fees in National Proceedings before IP Office Abolished
In the Republic of Croatia, administrative fees in proceedings before the IP Office are no longer charged as of June 24, 2021. At this date, the Act on the Fees in the Field of Intellectual Property, published in the “Official Gazette” No. 66/2021 on June 16, 2021, came into effect. The purpose of the Act is to harmonise with the obligations from international agreements and to implement an Action Plan for reduction of non-tax and fiscal levies adopted by the Government on May 7, 2020.
Initiated proceedings, where obligations to pay fees incurred or were due by June 24, 2021, that have not been settled, are charged according to the regulation in force at the time of the obligation. The reimbursement of special costs and costs for the provision of Information services is not changed by the new regulation.
Fees/charges prescribed by international organisations, which are paid in international procedures for the grant of industrial property, do not change.
Source: www.dziv.hr
Sep 09, 2021 (Newsletter Issue 14/21)New Regulation of Product Labelling As of April 30, 2021, a new regulation of product labelling is in force in Argentina. Resolution 283/2021 of the Ministry of Internal Trade, published in the Official Gazette on March 31, 2021, creates a Sign and Label Inspection System (SiFiRE in Spanish) to strengthen consumer protection measures.
The aim of the measure is to prevent misleading information on the signs or labels of certain products, while ensuring fair competition and transparency between the different goods available on the shelves.
The measure applies to the signs and labels of products released on the market in Argentina on food, beverages, drinkable food, hygiene products, perfumery, personal care and domestic cleaning suitable for human consumption and handling.
Manufacturer, importer and/or distributor of said products must submit the signs and labels to the inspection procedure at the Undersecretariat for Internal Trade prior to their marketing. Said signs and labels may not contain information about offers, promotions or discounts that cannot be guaranteed in the subsequent marketing.
For more information, please check hereSource: www.clarkemodet.com Sep 09, 2021 (Newsletter Issue 14/21)
IP Office No Longer Charges VAT for TM Services
On July 11, 2021, the Egyptian Trademark Office has announced that it is no longer going to charge a 14% value-added tax (VAT) on trademark related services. The decision entered into force on July 7, 2021.
Source: www.agip.com
Sep 09, 2021 (Newsletter Issue 14/21)New Trade Secret Law in ForceOn June 5, 2021, the new trade secret protection law entered into force in Serbia. The new law harmonises Serbian legislation with Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
For the information to be considered as a trade secret under the new law, it must:
- Have commercial value because it is not generally known or easily available to third parties who normally encounter this type of information.
- Be protected by its holder by appropriate measures to preserve its secrecy.
For a trade secret to enjoy legal protection under the new law, trade secret owners must institute internal trade secret protection policies and take other prescribed protective measures, such as using the term "trade secret" on confidential documents, restricting access to the premises or files where confidential information is located, and entering into confidentiality agreements with persons who may have access to trade secrets.
Under the new law, foreign holders of trade secrets have the same rights as domestic holders only if such protection arises from international agreements in force in Serbia or from the principle of reciprocity. The previous law did not distinguish between foreign and domestic holders.
For more information, please click here Source: www.petosevic.com Sep 09, 2021 (Newsletter Issue 14/21)Digital IP Renewal Service Officially LaunchedOn July 14, 2021, the UK Intellectual Property Office (UKIPO) officially launched a new digital IP renewal service for its customers. Up to 1,500 patents, trademarks or registered designs can be renewed in a single digital transaction, including combinations of patents, trademarks and designs.
IPO requires an email address, the patent, trademark or registered design numbers and a debit or credit card, or UKIPO deposit account with sufficient funds to use the service.
The service is the first step towards the “One IPO' Service”, a five-year program to transform IP services and add value to UKIPO for the UK economy.
For more information, please check here. The new service can be accessed hereSource: www.gove.uk Sep 09, 2021 (Newsletter Issue 14/21)New Intellectual Property Law PublishedOn July 5, 2021, the Chilean Official Gazette published the new Intellectual Property Law, recently approved, which modifies the current 1991 regulations. The purpose of the new Law is to allow better protection and enforcement of IP rights, establish more efficient registration procedures, and facilitate the processes to obtain these rights. The publication marks the beginning of the countdown -approximately six months- for the entry into force of this long-awaited regulation.
Concerning trademarks, the new regulations introduce the following changes:
- The definition of trademarks is modified to protect distinctive non-traditional signs such as olfactory, 3-D, tactile, positional, and hologram trademarks.
- Commercial and industrial establishments can not get registered as trademarks any longer. Existing marks of this kind shall be renewed as service marks in classes 35 and 40 to keep the rights acquired by the holders of such registrations.
- The trademark owner is required to make actual and effective use of its sign in the market. The revocation may only be requested by whoever has a legitimate interest and may not be declared ex officio.
- The regulations for collective and certification marks are aligned to international standards.
- Trademark renewals may be requested six months before the end of the term and up to six months after. Renewal fees are due for payment with the renewal application. Renewals requested after the registration’s expiration will be subject to a surcharge of 20% for each month or a fraction of a month.
- Specific legitimate uses of another’s trademark are allowed for names or pseudonyms and generics.
- The offense of trademark counterfeiting is typified and penalized with a prison sentence (currently, there is only a fine for the benefit of the Public Prosecutor).
- The law established a compensation system with pre-established indemnities for trademark infringement.
There are also significant changes for patents, designs, trade secrets, and geographical indications. For example, the new law introduces patent fee amendments, more straightforward registration procedures, and an extension of protection for industrial designs. Moreover, a definition of „trade secret“ is established in line with the standard set by the TRIPS (Agreement on Trade-Related Intellectual Property Rights). The regulations on geographical indications and appellations of origin are amended to add grounds for non-registrability and incorporate the possibility of requesting their cancellation when the product is no longer produced in the protected area.
For more information, please click hereSource: www.clarkemodet.com Sep 09, 2021 (Newsletter Issue 14/21)The Government Accedes to Nice AgreementIsrael joins the Geneva Act of the WIPO's Nice Agreement on September 25, 2021. The Nice Agreement and its Geneva Act establish a classification of goods and services for the registration of trademarks, streamlining trademark application processes, and making it easier for brand owners and entrepreneurs to seek trademark protection. Israel's instrument of accession was received by the WIPO on June 25, 2021.
For more information, please click hereSource: Israel Joins the Geneva Act of WIPO's Nice Agreement - YouTube Sep 09, 2021 (Newsletter Issue 14/21)September 30, 2021: Important Deadline for Holders of International RegistrationsPlease be reminded, that September 30, 2021, is an important deadline for holders of international registrations: Holders of international registrations, which contain a designation of the European Union (EU) that were pending a decision by the EU IP Office on January 1, 2021, must apply for a national trademark registration with the United Kingdom Intellectual Property Office (UKIPO) on or before September 30, 2021, to preserve the date of the designation of the EU.
For more information, please check hereSource: www.wipo.int Sep 09, 2021 (Newsletter Issue 14/21)Official Fee IncreasedAs of July 1, 2021, the official fee for filing a trademark application is now MNT 50,000 for up to 3 classes (previously MNT 20,000) and MNT 5,000 for each additional class in paper. The issuance of trademark certificate changed from MNT 15,000 to MNT 30,000.
Source: Schmitt & Orlov, Mongolia Sep 09, 2021 (Newsletter Issue 14/21)
Withdrawal of Notification on Division of International Registrations
On July 29, 2021, the Office of Belarus withdrew the notification made under Rule 40(6) of the Regulations under the Madrid Protocol with immediate effect.
Consequently, as from that date, the Office of Belarus can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations.
Source: www.wipo.int
Sep 09, 2021 (Newsletter Issue 14/21)Changes to Official Fees for e-Issuance of Original CertificatesOn June 17, 2021, the Russian Government issued a ruling that introduced changes to the official fees related to the issuance of original certificates in accordance with Decree of the Government of the Russian Federation No. 922. The changes became effective on June 21, 2021.
These amendments are mainly aimed at encouraging applicants to obtain certificates for trademarks and patents in electronic form instead of paper form.
Previously, the issuance of original certificates for trademarks, geographical indications, appellations of origin and patents was subject to an issuance fee of RUB 2,000 for trademarks and RUB 1,500 for patents.
With this change, the fee will only be charged if the applicant specifically requests the paper original of the certificate.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine and www.sojuzpatent.com Jul 01, 2021 (Newsletter Issue 13/21)
Ratification of Geneva Act of Lisbon Agreement on Appellations of Origin and GIs
On June 10, 2021, Hungary deposited its instrument of ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act").
The Geneva Act of the Lisbon Agreement will enter into force, with respect to Hungary, on September 10, 2021.
Source: www.wipo.int
Jul 01, 2021 (Newsletter Issue 13/21)Search Tool for Pre-Approved TM Goods and Services TermsOn June 18, 2021, the Intellectual Property Office of New Zealand (IPONZ) announced a new tool called 'Trade Mark Specification Builder' for searching pre-approved trademark goods and services terms.
The tool provides a more streamlined interface to help identify pre-approved goods and services terms. These terms can then be included in the specification section of trademark applications. The search uses artificial intelligence to provide better results and related terms.
The access the 'Trade Mark Specification Builder', please click hereSource: www.app.iponz.govt.nz Jul 01, 2021 (Newsletter Issue 13/21)
3-Month Period before Restriction or Cancellation of Intl. Registrations Are Actioned
Notifications of the restriction or cancellation of international trademark registrations designating New Zealand (NZDs) from their office of origin are no longer immediately actioned in the New Zealand trademark register.
Instead, a 3-month delay is automatically imposed before implementing the change. This delay is to provide an opportunity to request for the NZD to be transformed into a national application or registration. Applicants must still email at mail@iponz.govt.nz to request for this transformation.
Source: www.app.iponz.govt.nz
Jul 01, 2021 (Newsletter Issue 13/21)TBMP 2021 Update AvailableThe United States Patent and Trademark Office (USPTO) informs that the June 2021 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage under "Policies & procedures" here.
This update incorporates relevant case law issued between March 1, 2020, and February 28, 2021. It also includes updates on requirements for new fees in connection with briefs and oral hearings as well as the change in nomenclature from "standing" to file an opposition or cancellation under the Trademark Act to "entitlement to a statutory cause of action."Source: www.uspto.gov Jul 01, 2021 (Newsletter Issue 13/21)IP Office Aligned with CP5On June 22, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a practice paper under the Common Communication (CP5) — Relative grounds of refusal - Likelihood of confusion (impact of non-distinctive/weak components).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN).
The CP5 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jul 01, 2021 (Newsletter Issue 13/21)IP Office Aligned with CP3On June 17, 2021, the General Directorate of Industrial Property (GDIP) under the Ministry of Finance and Economy of the Republic of Albania has published a practice paper under the Common Communication on the Common Practice of Distinctiveness (CP3) - Figurative Marks containing descriptive / non-distinctive words.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the GDIP and the IP offices of the European Union Intellectual Property Network (EUIPN).
The CP3 Practice Paper has been made publicly available in Albanian and English.Source: www.euipo.europa.eu Jul 01, 2021 (Newsletter Issue 13/21)Changes to French Language Laws Proposed by Quebec's Bill 96On May 13, the Quebec Government introduced Bill 96 - An Act respecting French, the official and common language of Québec that proposes significant changes to Quebec’s language laws. Once passed, Bill 96 would significantly strengthen French as the first language of commerce in Quebec.
Under the Trademarks Act, Quebec’s language laws allow for a trademark (e.g., a logo on an advertising poster) to be exclusively in another language as long as there were no versions of the mark registered in French (the "recognized Trademark" exception).
Under Bill 96, this exception is narrowed considerably. For example, if a company displays a trademark name in English using the current exception for recognized trademarks, it must ensure that the mark is "markedly predominant" in French and it may need to register for an updated trademark.
Further information can be seen here. The Bill 96 can be accessed here.Source: www.dickinson-wright.com Jul 01, 2021 (Newsletter Issue 13/21)New Independent Regulator for Patent and Trademark AgentsOn June 28, 2021, the Canadian Intellectual Property Office (CIPO) informs that the College of Patent Agents and Trademark Agents (CPATA) has been established and is officially in force as of June 28, 2021.
The College is now responsible for maintaining the registers of patent agents and trademark agents, administering patent and trademark agent qualifying examinations, collecting associated College fees, and conducting investigations and disciplinary proceedings.
Any agent whose name was entered in the register of patent agents in accordance with paragraph 22(a) of the Patent Rules or the list of trademark agents in accordance with paragraph 19(a) of the Trademark Regulations on the day prior to the coming-into-force day, was automatically transferred to the College's register of patent agents or register of trademark agents, as applicable, and shall be deemed to be issued a licence.
For further information, please check the article of Therrien Couture Joli-Coeur, our Country Index Partner for Canada here and on the CIPO website here Source: www.canada.ca; www.groupetcj.ca Jun 17, 2021 (Newsletter Issue 12/21)Final Rule on Representation of Others Before USPTOThe United States Patent and Trademark Office (USPTO) has amended the rules regarding representation of others before the USPTO set forth in 37 C.F.R. part 11 by issuing a final rule effective June 25, 2021.
This rulemaking more closely aligns the USPTO Rules of Professional Conduct with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity by revising various deadlines, procedures concerning the registration exam, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions. Finally, the rule adds a show-cause mechanism for those rare instances where registration has been issued based on fraud, mistake, or material misrepresentation.
For more information on the final rule, please click hereSource: www.federalregister.gov Jun 17, 2021 (Newsletter Issue 12/21)
Accession to Nice and Locarno Classification
On May 31, 2021, WIPO informed about the accession of Paraguay to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and to the Locarno Agreement Establishing an International Classification for Industrial Designs.
Both agreements enter into force on August 31, 2021.
Source: www.wipo.int
Jun 17, 2021 (Newsletter Issue 12/21)
Statements of Grant of Protection for Hague Designs Designating Spain
As of April 5, 2021, the Spanish Patent and Trademark Office (OEPM) automatically issues statements of grant of protection concerning all, or some of the designs included in Hague System international registrations in which Spain is designated. This is in accordance with Rule 18bis(1) of the Common Regulations.
The OEPM issues these statements at the end of the applicable refusal period if no opposition has been filed.
Source: www.wipo.int
Jun 17, 2021 (Newsletter Issue 12/21)Judicial Interpretations for Punitive DamagesOn March 3, 2021, the Chinese Supreme Court issued the "Supreme Court’s Interpretations on the Application of Punitive Damages in the Trial of Civil Cases of Intellectual Property Infringement" to unify the handling of punitive damages claims brought before all People’s Courts.
The judicial interpretations comprise seven articles that address a number of previously open issues, such as when infringements are "intentional", when an infringement entails "serious circumstances", and how to determine a proper base compensation on which compensation multiples can be applied to calculate an appropriate punitive amount.
In addition, the Supreme Court circulated "Model Cases for Applying Punitive Damages in Civil Cases involving Intellectual Property Rights Infringements" to illustrate the proper handling of punitive damages.
For further information, please see hereSource: www.perkinscoie.com Jun 17, 2021 (Newsletter Issue 12/21)Eurasian Industrial Design Applications StartedOn June 1, 2021, the Eurasian Patent Office (EAPO) started accepting Eurasian industrial design applications when the Eurasian design protection system became operational under the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention. Applicants can now obtain simultaneous protection within the territory of the states of Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia, where the Protocol entered into force.
The three remaining EAPO member states Belarus, Tajikistan and Turkmenistan have yet to complete their ratification procedures. According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.
For more information, please click here and hereSource: www.petosevic.com Jun 17, 2021 (Newsletter Issue 12/21)IP Office Aligned with CP8 On June 10, 2021, the Intellectual Property Office of the Republic of Serbia (IPORS) has updated its methodology to include the principles of the Common Practice (CP8): Use of a trademark in a form differing from the one registered, which was developed by the European Union Intellectual Property Network.
IPORS is the first non-EU IP office to adopt the criteria listed under CP8. This achievement follows the implementation of CP3: Distinctiveness – Figurative Marks containing descriptive/non-distinctive words, and CP5: Relative Grounds of Refusal – Likelihood of confusion (impact of non-distinctive/weak components).
The CP8 principles are included in the Practice Paper, which provides a clear and comprehensive explanation of the principles on which the practice is based. It assesses the impact of additions, omissions and modifications of characteristics, when these changes appear alone or in combination, on the distinctive character of registered word marks, figurative marks and composite marks (combinations of verbal and figurative elements).
The CP8 Practice Paper has been made publicly available in Serbian and English. Source: www.euipo.europa.eu Jun 17, 2021 (Newsletter Issue 12/21)IP Office Aligned with CP6On June 2, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published as the first Latin American IP office the criteria developed under the Common Communication on the Common Practice – Graphic Representation of Designs (CP6).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice of the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN) is based, particularly on how to use appropriate disclaimers, types of views and how to represent designs on a neutral background.
The CP6 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jun 03, 2021 (Newsletter Issue 11/21)New e-Functions to Prepare Lists of Goods and ServicesOn May 17, 2021, the German Patent and Trade Mark Office (DPMA) informed that new functions to prepare lists of goods and services are available to trademark applicants when filing electronically. The terms of goods and services available in a basket in DPMAdirektWeb are now sorted by topic, which creates and shows the links between the generic terms and the individual terms assigned to them. This allows a specific search for groups of goods and services, and it makes clear that a number of goods and services can be claimed with a few generic terms.
Detailed and useful information on how to use the new functions for the preparation of the lists of goods and services is available in the “WDVZ” section of DPMAdirektWebSource: www.dpma.de Jun 03, 2021 (Newsletter Issue 11/21)
Inquiry System for EU Trademarks Launched
On April 26, 2021, the Chinese National Intellectual Property Administration (CNIPA) launched a registration-information inquiry system for trademarks registered in the European Union.
The system, called EUTMS, is the first official inquiry system for international trademark information in China and can serve 100 active users simultaneously. The public can search using keywords such as trademark name, application number and applicant to browse and download trademark information.
The system was developed following an agreement on the mutual exchange of trademark information between the CNIPA and the European Union Intellectual Property Office (EUIPO) signed on Sept 25, 2020.
Source: www.ipraction.gov.cn
Jun 03, 2021 (Newsletter Issue 11/21)Trademark Use Not Limited to Use in TradeThe Supreme Administrative Court (SAC) clarified in a judgment in 2020 that use of a trademark as stipulated in the Trademark Act is not limited to profit-making commercial transactions.
According to Article 5 of the Trademark Act, "use of a trademark" means any of the following act, "in the course of trade", where such trademark is capable of being recognized by relevant consumers as a trademark:
1. to apply a trademark to goods or packaging or containers thereof;
2. to possess, display, sell, export, or import the goods referred to in the preceding subparagraph;
3. to apply a trademark to articles relating to the provision of services; or
4. to apply a trademark to commercial documents or advertisements relating to goods or services.
The SAC pointed out that the Trademark Act only requires that use should be "in the course of trade" which is not limited to profit-making business transactions. The use of trademarks registered by non-profit organisations, e.g., Harvard University, National Taiwan University and Tzu Chi Foundation, are examples of applicable use.
Source: Deep & Far, Taiwan and Lee and Li Attorneys at Law, Taiwan Jun 03, 2021 (Newsletter Issue 11/21)
IP Office Identifies Duplicate User Records
On May 31, 2021, the State Patent Office of the Republic of Lithuania (VPB) was the first IP Office to implement the European Cooperation Project "IP User Repository (IPUR)", after testing an initial pilot phase of the tool in Portugal, Denmark and Slovenia.
IPUR is a support tool developed to help IP Offices identify and correct duplicate user records (personal data). The tool uses artificial intelligence (AI) to identify potential personal data records that could belong to the same entity if some preliminary criteria have been defined by the Office. Based on these criteria, the tool proposes the matches as clusters for the Office to review.
A "cleaner" database of users will help reduce the number of errors in the e-filing process and delays in the examination process, as well as improve interaction with clients.
Source: www.euipo.europa.eu
Jun 03, 2021 (Newsletter Issue 11/21)
Chance to Renew Expired Registrations
On May 25, 2021, the Uganda Registration Services Bureau has given notice via the government publication New Vision that 4,095 expired trademark registrations will be cancelled if they are not renewed on or before June 23, 2021. Some of these registrations expired as far back as 2005.
Source: www.spoor.com
Jun 03, 2021 (Newsletter Issue 11/21)
No Longer Extension of Trademark Registrations to Kurdistan
The Trademarks Registrar of Kurdistan issued new directives suspending the legal extension of registered Iraqi trademarks to the Kurdistan region until further notice.
In lieu of this change in practice, trademark registration should be sought directly with the Kurdistan Trademark Office by filing a new trademark application. Before the new practice, it was possible to obtain legal protection by registering trademarks in Kurdistan if the owner of a registered trademark in Iraq wished to extend its protection to Kurdistan.
Source: www.agip.com
May 20, 2021 (Newsletter Issue 10/21)Power of Attorney Deadline ExtendedOn April 11, 2021, the UAE Trademark Office announced that the deadline for filing the Power of Attorney (PoA) for new trademark applications has been extended to 30 days from the filing date. Previously, the PoA only had to be filed together with the application form.
The new grace period is not applicable to oppositions and appeals. Thus, for these procedures, the PoA must be filed together with the application.
Source: JAH & Co. IP, Qatar May 20, 2021 (Newsletter Issue 10/21)Feedback on New Proposed Rules of the TMA SoughtOn May 18, 2021, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking on "Changes To Implement Provisions of the Trademark Modernization Act (TMA) of 2020". The USPTO is seeking feedback on the new proposed rules.
The proposed rules address:
- Two new ex parte proceedings to cancel registered trademarks for nonuse
- A new ground for cancellation of a registration before the Trademark Trial and Appeal Board
- Shorter response times for office actions
- Letter of protest practice
- Attorney recognition until revocation or withdrawal
- Attorney withdrawal requirements
- Court orders concerning registrations
The USPTO will be holding public roundtables to explain the proposed rules and answer questions. Feedback can be submitted until July 19, 2021 at www.regulations.gov.
Further information on the public roundtables will be provided on the TMA webpage of the USPTO website hereSource: www.federalregister.gov May 20, 2021 (Newsletter Issue 10/21)Trademark Regulations AmendedIn May 2021, the Uganda Registration Services Bureau (URSB) informs that the Trademark Act 2010 and the Trademarks Regulations 2012 have been amended by the Trademarks (Amendment) Regulations 2021.
Main changes are the following:
- Agents must now register as trademark agents on the Registry's website. They must renew their registration every year.
- The applicants' addresses must now include an email address, a telephone number and a postal code.
- Searches must now be requested on an official form (TM 27) and are subject to a fee. Previously, a search could be requested by letter.
- Classification will be in accordance with ‘the current edition’ of the International Classification of Goods and Services (Nice Agreement). Until now there has been a specific reference to the 9th edition of the International Classification.
- Publication of an application will no longer be restricted to the Gazette. Publication can now be made in the Gazette "or in other media as the Registrar may direct".
- There is now a statutory form (TM 42 A) for the application "extension of time". An official fee is payable.
Further Information on the changes can be seen hereSource: www.ursb.go.ug; www.spoor.com May 20, 2021 (Newsletter Issue 10/21)Further Details on Accession to Hague SystemThe instrument of accessionto the Hague System contained the following declarations:
- international applications may not be filed through the IP Office of Belarus;
- the legislation of Belarus does not provide for the deferment of the publication of an industrial design;
- the maximum duration of protection is 15 years; and
- for the application of level two of the standard designation fee.
The declarations will enter into force on July 19, 2021.
For more information on the notice, click hereSource: www.wipo.int May 20, 2021 (Newsletter Issue 10/21)EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine May 20, 2021 (Newsletter Issue 10/21)China IPR Toolkit Updated by USPTOThe United States Patent and Trademark Office (USPTO) published an updated version of the China Intellectual Property Rights (IPR) Toolkit to reflect the recent changes made to China’s intellectual property (IP) related laws and government structure.
It highlights the differences between the U.S. and Chinese IP rights legal systems and provides general guidance for businesses and practitioners to better understand the basics of the IP landscape in China. Source: www.uspto.gov May 20, 2021 (Newsletter Issue 10/21)Practice Change in Examination Due to BacklogOn May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: "Measures to improve timeliness in examination" and "Requests for expedited examination". The actions being taken by CIPO are in response to higher filings of trademark applications than anticipated. Effective immediately the following practices will be followed during the examination of a trademark application.
Measures to Improve Timeliness in Examination
- Suggestions related to acceptable goods or services: Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner's report.
- Some applications will be examined more quickly: Applications which use only pre-approved goods or services from CIPO's Goods and Services Manual will be examined more quickly.
- Fewer examination reports prior to refusal: Examiners will reduce the number of reports issued to applicants and CIPO will reasonably refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.
Requests for Expedited Examination
CIPO announced that the IP Office will begin accepting requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request.
The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
- a court action is expected or underway;
- counterfeit products at the Canadian border will be combated;
- registration of a trademark is required due to strong disadvantage in online marketplaces; or
- registration of trademark is required to protect its priority claim within a certain period and after request by a foreign IP Office.
For more information, please click on the notice links above. Source: www.ic.gc.ca May 20, 2021EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine May 20, 2021EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine May 20, 2021EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine May 17, 2021EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states, including the last state, Kazakhstan.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine May 06, 2021 (Newsletter Issue 9/21)
Accession to Nice Agreement
On April 22, 2021, the Government of Saudi Arabia deposited its instruments of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.
The Nice Agreement will enter into force, with respect to the Kingdom of Saudi Arabia, on July 22, 2021.
Source: www.wipo.int
May 06, 2021 (Newsletter Issue 9/21)
Back-office System for Designs Enhanced
On April 5, 2021, the Spanish Patent and Trademark Office (SPTO) completed a new set of improvements to its back-office system for designs. These were implemented with the support of the EUIPO’s European cooperation projects.
Several examination processes were automated in order reduce potential delays and prevent errors in manual data entry. Two of the improvements especially stand out: The electronic signature is now used in the Design Certificate. This will increase cybersecurity and avoid possible fraudulent notifications and phishing attempts. The second significant improvement is a function that automates notifications to WIPO in the case of oppositions.
Source: www.euipo.europa.eu
May 06, 2021 (Newsletter Issue 9/21)
Back-office System Enhanced
On April 6, 2021, the Hellenic Industrial Property Organisation (OBI) has improved its back-office system with the support of the EUIPO’s European Cooperation Projects (ECP2).
The upgrade enhances the user experience because it automates operations related to persons, history sections, and tasks. Furthermore, the authentication system was improved, reinforcing the integration with the centralized user management service.
Source: www.euipo.europa.eu
May 06, 2021 (Newsletter Issue 9/21)
Further Improvements to Back-office System
As of April 6, 2021, the State Patent Bureau of the Republic of Lithuania (SPB) has successfully implemented additional functionalities into the back-office system.
The system was integrated with the national systems of Lithuania and with the budget system of the Lithuanian State Tax Inspectorate.
Source: www.euipo.europa.eu
May 06, 2021 (Newsletter Issue 9/21)Amendments to Trademark Act The Korean National Assembly has passed additional legislation to strengthen the protection of IP rights. The new legislation includes amendments to the Trademark Act, the Patent Act, the Design Protection Act, and the UCPA Act (Unfair Competition Prevention and Trade Secret Protection), introducing punitive damages for infringement and idea theft.
The amendments to the Trademark Act, Patent Act, and Design Protection Act became effective on October 20, 2020, and the UCPA amendments on April 21, 2021. All of the amendments apply to infringing acts or thefts arising after this date.
The Trademark Act underwent the following amendments:
- Introduction of treble damages for intentional acts of trademark infringement
Courts can now award up to triple the confirmed damages if intentional acts of trademark infringement (Article 110(7)).
- “Reasonably expected” royalties as basis for damages computation
The amendment altered the “ordinarily expected” standard to a “reasonably expected” standard, allowing courts to properly reflect the market reality when calculating royalty-based damages (Article 110(4)). This revision should allow trademark holders to receive higher damages awards.
- Increased maximum statutory awards
The maximum award of statutory damages for trademark infringement is now KRW 100 million and KRW 300 million in case of intentional or willful infringement (Article 111(1)). Previously the statutory damages were up to KRW 50 million.
For more information, please check hereSource: www.leeko.com May 06, 2021 (Newsletter Issue 9/21)
Examination Guidelines on Similarity of Goods Changed
Recently, the Korea Intellectual Property Office (KIPO) amended its Examination Guidelines on Similarity of Goods (Guidelines). A notable change under this amendment relates to an adjustment to the scope of similarity between goods and services relating to software. The amendments to the Guidelines are effective for all trademark applications filed on or after January 1, 2021.
KIPO utilizes "Similarity Codes" to define categories of broadly similar goods and services. Goods designated under the same Similarity Code are similar for trademark registration purposes.
Formerly, all software-related goods shared the same Similarity Code. Now, the Examiners must consider several factors such as the "type" and "usage" of the software on a case-by-case basis when determining the similarity between software-related goods and services.
The amended Guidelines intend to reflect the increasing complexity and diversity of software-related products more adequately.
Source: www.ip.kimchang.com
May 06, 2021 (Newsletter Issue 9/21)Fast-Track TM Renewal and Examination IntroducedOn March 1, 2021, the Department of Intellectual Property (DIP) introduced a fast-track trademark renewal process to examine applications and grant a certificate of renewal. The expedited process incurs no additional official fee.
The applications must comply with all of the fast-track conditions specified in the recent DIP notification:
- The total number of goods or services must not exceed 30 items.
- No changes are made to the particulars of the registration.
- The application must be filed at the DIP by either the owner or an appointed attorney. In the latter case, a power of attorney must authorize the attorney to collect the certificate on the owner’s behalf.
- Fast-track examination must be requested when the renewal application is submitted.
Further, the Department of Intellectual Property (DIP) made a “First Action Fast Track” program available to the public on April 16, 2021. The program expedites the issuance of a first office action for trademarks within six months from the application's filing date at no additional cost.
The applications must comply with all of the fast-track conditions specified in the DIP notification:
- The total number of goods or services must not exceed 10 items.
- The description of goods or services should follow the DIP’s suggested description manual
- No amendment (such as recordal of name or address change), recordal of assignment or inheritance, or request to prove acquired distinctiveness through use is made on the application.
For more information, please check here and hereSource: www.tilleke.com Apr 22, 2021 (Newsletter Issue 8/21)Further Steps towards Common EU Practices End of March 2021, the National Intellectual Property Center of Georgia (Sakpatenti published two practice papers to announce their agreement on common EU principles regarding designs:
- Common Communication on the Common Practice — Graphic Representation of Designs (CP6)
- Common Communication on the Common Practice of Designs - Criteria for assessing disclosure of designs on the internet (CP10)
Common Communication on the Common Practice — Graphic Representation of Designs (CP6)
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based and seeks to increase transparency, legal certainty and predictability for the benefit of users and examiners of IP offices. It also aims to become a reference for all interested parties, covering a majority of cases.
The document is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the specific criteria applicable in each case. It has been made available to the public in Georgian and English.
Common Communication on the Common Practice of Designs - Criteria for assessing disclosure of designs on the internet (CP10)
Sakpatenti published a practice paper on the criteria for assessing the disclosure of designs on the internet and to provide recommendations thereof. It provides a clear and comprehensive explanation of the principles on which the practice is based, and which will be generally applied by the IP Office.
The document is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the specific criteria applicable in each case. It has been made available to the public in Georgian and English.Source: www.sakpatenti.gov.ge; euipo.europa.eu Apr 22, 2021 (Newsletter Issue 8/21)
Draft Examination Manual Published
On February 24, 2021, the Trademark Office of Thailand’s Department of Intellectual Property (DIP) published its draft amendments to the Trademark Examination Manual, outlining and formalising current practices of trademark examiners and providing guidelines on areas left to examiners' discretion.
Proposed key amendments focus e.g. on inherent registrability, prohibited marks and detailed formality guidelines.
The proposed amendments to the Manual will provide further certainty for brand owners in the way applications will be assessed.
Source: www.rouse.com
Apr 22, 2021 (Newsletter Issue 8/21)
Maximum Duration of International Designs Specified
On April 20, 2021, the WIPO received from the Office of the Registrar General, Rwanda Development Board (RDB), the declaration as required under Article 17(3)(c) of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, specifying that the maximum duration of protection provided for by the legislation of Rwanda in respect of industrial designs is 15 years.
The 15-year maximum duration of protection applies to all international registrations designating Rwanda, including those whose international registration date is before the date of this Information Notice.
Source: www.wipo.int
Apr 22, 2021 (Newsletter Issue 8/21)
Accession to Hague System
On April 19, 2021, the Government of Belarus deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement with WiPO.
As of July 19, 2021, companies and designers in Belarus can begin using the Hague System to protect their designs internationally by filing a single international application. Non-residents seeking design protection in Belarus will be able to designate the Hague System’s newest contracting party in their international applications as well.
Source: www.wipo.int
Apr 22, 2021 (Newsletter Issue 8/21)Accession to Madrid Protocol On February 24, 2021, Pakistan deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Pakistan wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Pakistan requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Pakistan (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol); and
- the notification indicating that the Office of Pakistan will not present to WIPO requests for the merger of international registrations resulting from division because the law of Pakistan does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).
The Madrid Protocol will enter into force on May 24, 2021.
For further Information can be seen in the Information Notice No. 4/2021 hereSource: www.wipo.int Apr 22, 2021 (Newsletter Issue 8/21)IP Appellate Board AbolishedOn April 4, 2021, the Ministry of Law and Justice has issued an Ordinance, namely The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 (Ordinance) to further amend the Trademarks Act (1999), the Copyrights Act (1957), the Geographical Indication of Goods (Registration and Protection) Act (1999) and the Patents Act (1970) as well as the Protection of Plant Varieties and Farmers Rights’ Act (2001). The Ordinance came into effect from April 4, 2021.
Some of the important changes to the Trademarks Act (1999) are the following:
- All references to the Intellectual Property Appellate Board (IPAB) in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
- Any proceedings for cancellation of a mark on the ground of non-use under Section 47 of the Act shall now lie at the Registrar or the High Court only.
- Any proceedings for rectification of a mark under Section 57 of the Act shall now lie at the Registrar or the High Court only.
- All appeals under Section 91 of the Act shall lie at the High Court instead of at the IPAB.
- An action for infringement of trademark shall be stayed under Section 124 of the Act if a defendant pleads invalidity of the mark or raises a defense under Section 30(2)(e) of the Act and the plaintiff pleads invalidity of the defendant’s mark, if rectification proceedings are pending before the Registrar or the High Court in respect of such mark, prior to institution of action for infringement.
- All proceedings pending before the IPAB shall be transferred to the High Court.
For further information, please check here and here
Source: Krishna & Saurastri Associates LLP and S. S. Rana & Co. Apr 08, 2021 (Newsletter Issue 7/21)Changes to IP SystemOn January 28, 2021, the President of Uzbekistan issued the Resolution “On Measures to Improve the Intellectual Property Protection System”, introducing numerous changes in the field of intellectual property.
From April 1, 2021, the restriction on the registration of trademarks and service marks exclusively in the name of legal entities and natural persons carrying out entrepreneurial activities is abolished. All legal entities and natural persons are entitled to register their trademarks and service marks now.
In addition, an accelerated examination was introduced, which shortens the registration periods for intellectual property rights objects.
Further, exporters whose share of exports exceeds 60% of total turnover, as well as entrepreneurs active in the field of agriculture and handicrafts, are exempt from paying official fees.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine and PETOŠEVIĆ, Uzbekistan Apr 08, 2021 (Newsletter Issue 7/21)
Revised Enforcement Rules Improve Applicants' Convenience
According to KIPO, the revision to the Enforcement Rules of the Korean Trademark Law has taken effect on February 1, 2021, to improve the convenience of an applicant of a trademark application and to reflect the changing transaction modes. The revision includes easing the restriction to the number of drawings in a three-dimensional trademark sample.
The major content of the revision to the Enforcement Rules of the Korean Trademark Law is as follows:
- When an applicant files an application for a three-dimensional trademark or a location trademark, the revised Enforcement Rules have been simplified making it possible to submit only one sheet of a drawing to clearly describe the features of a sample. Previously, the applicant had the hassle to submit a number of drawings.
- Under the revised Rules, all of the amendments to an international trademark application can now be made in the Korean national phase through an amendment to the Korean application.
- Regarding the trademark-related procedures, when identity verification is required, it is possible to use the seal or signature registered when a patent client number was issued, without submitting any separate seal certificate.
- A method of indicating a registered trademark has been revised to be flexibly defined, by expecting that a method of indicating a registered trademark (for example an electronic indication such as barcode, QR code) will be diversified according to the technology development.
Source: www.pkkim.com
Apr 08, 2021 (Newsletter Issue 7/21)
Grace Period for TM Renewals Extended
On March 17, 2021, through the publication of General Ruling No. 96/2021 in the Official Gazette, the National Institute of Industrial Property (INAPI) provided new instructions in relation to the filing and payment of renewal applications of trademark registrations in Chile, applying the regulations set forth in the Trademark Law Treaty.
As from April 1, 2021, it will be possible to file and pay the renewal of registrations of word marks, figurative trademarks and word and label trademarks within six months prior to the registration’s expiration date and until six months after this date. This extends the grace period to request the renewal of a trademark registration, since the term to proceed with its renewal changes from 30 days to 6 months, counted as from the registration’s expiration date.
Sound, collective, certification and guarantee trademarks are excluded from this disposition, as the maximum term to proceed with their renewal will remain to be of 30 days counted as from the registration’s expiration date.
Regarding the payment of renewal fees, the General Ruling contemplates that, in those cases in which the payment of the renewal fees is made within 6 months following a registration’s expiration date, a surcharge of 20% over the amount of those fees will apply for each month or fraction of a month of delay in payment, counted as from the 30 days following the registration’s expiration date. This means that if payment is made within 30 days following a registration’s expiration date, no surcharge will be applied.
Source: www.carey.cl
Apr 08, 2021 (Newsletter Issue 7/21)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs
On March 30, 2021, Oman deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act").
The Geneva Act of the Lisbon Agreement will enter into force, with respect to Oman, on June 30, 2021.
Source: www.wipo.int
Mar 25, 2021 (Newsletter Issue 6/21)EAPO launches the Pharmaceutical RegisterOn March 1, 2021, the Eurasian Patent Office (EAPO) informs that a new information resource has been opened for public access on the EAPO web portal, namely the EAPO Pharmaceutical Register (Register), containing information on Eurasian patents related to active pharmaceutical ingredients (API) with international non-proprietary names (INN).
The Register provides up-to-date information on the legal status of such Eurasian patents, including information on the validity of Eurasian patents on the territory of the Eurasian Patent Convention (EAPC) Contracting States, on the Eurasian patent term extensions carried out by the EAPO in accordance with Rule 16 (5) of the Patent Regulations under the EAPC, and on registered licensing agreements.
The Register also features direct links to information on these Eurasian patents in the Eurasian Patent Register and in the Eurasian Publication Server. The EAPO Pharmaceutical Register will also include information on the registration of medicinal products in the EAPC Contracting States, if available.
Owners of Eurasian patents and their representatives can submit to the EAPO a request for inclusion of the corresponding Eurasian patents in the EAPO Pharmaceutical Register.
The Register is currently only available in Russian. An English version is expected soon.
For more information, please click here Source: www.eapo.org Mar 25, 2021 (Newsletter Issue 6/21)EU and Chinese Geographical Indications Protectable NowOn March 1, 2021, the EU-China bilateral agreement on protecting geographical indications (GIs) in China and Europe entered into force. The agreement protects around 200 iconic European and Chinese agri-food names against imitation and usurpation, bringing mutual trade benefits and introducing consumers to guaranteed, authentic products from two regions with a rich culinary and cultural tradition.
The EU list of GIs to be protected in China includes iconic GI products such as Cava, Champagne, Feta, Irish Whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego.
Among the Chinese GI products, the list includes for example Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).
In the course of the next four years, the agreement will expand to cover an additional 350 GI names from both sides. These names will have to follow the same approval procedure as the names already covered by the agreement (i.e. assessment and publication for comments).
For more information, please click here Source: www.ec.europa.eu Mar 25, 2021 (Newsletter Issue 6/21)
Back Office System Upgraded
On February 18, 2021, the State Patent Bureau of the Republic of Lithuania (SPB) has successfully upgraded its back office system to SP Back Office. This was possible thanks to the close cooperation between the EUIPO and the SPB project teams and their partners.
The SPB is the first office to upgrade to SP Back Office V 3.0 and it paves the way for future upgrades in other intellectual property offices. In addition to an improved search engine and a more modern and user-friendly interface, this upgrade also brings important technical improvements to the existing system that will enable new functionalities and easier system maintenance.
Source: www.euipo.europa.eu
Mar 25, 2021 (Newsletter Issue 6/21)IP Office Provides Madrid e-FilingStarting March 15, 2021, the Spanish Patent and Trademark Office (OEPM) has given access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
An integrated key feature includes in-app access to the Madrid Goods & Services Manager that allows users to check the classification of terms in their list of goods and services.
More information on the notice, please click hereSource: www.wipo.int Mar 25, 2021 (Newsletter Issue 6/21)IP Office Provides Madrid e-FilingStarting March 15, 2021, the Iranian Intellectual Property Center (IPC) has given access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
An integrated key feature includes in-app access to the Madrid Goods & Services Manager that allows users to check the classification of terms in their list of goods and services.
More information on the notice, please click here Mar 25, 2021 (Newsletter Issue 6/21)
IP Appellate Board Endangered
On February 11, 2021, the Ministry of State Finance submitted the bill titled “The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021”. This bill will reform the tribunal structure system and will endanger the continuation of the Intellectual Property Appellate Board (IPAB).
In 2003, the IPAB was constituted by the Indian Government to hear and resolve the appeals against the decisions of the registrar under the Indian Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. Later in 2007, the IPAB has been authorized to hear and adjudicate upon the appeals from most of the decisions, orders or directions made by the Patent Controller under the Patents Act.
Should the bill pass through, the competencies of IPAB will be taken over by the commercial and high courts of the country.
Source: www.intellectual-property-helpdesk.ec.europa.eu
Mar 25, 2021 (Newsletter Issue 6/21)New Service to Update Representative AddressFollowing Brexit, owners of newly created comparable trademarks and re-registered designs will need to appoint a UK attorney to represent them before Intellectual Property Office (UKIPO).
The UKIPO has introduced a temporary service to deal with high volume requests to update the representative address. With this new service at least 50 cases can be updated when applying a single UK address for service for some, or all, of the comparable trademarks or re-registered designs that currently have another representative’s EEA address for service.
Furthermore, the temporary service has been extended until September 30, 2021.
For more information, please click here Source: www.gov.uk Mar 11, 2021 (Newsletter Issue 5/21)
Artificial Intelligence to Examinations Introduced
From February 15, 2021, the service has been started using artificial intelligence (AI) technology for trademark and design examination and trial purposes according to the Korea Intellectual Property Office (KIPO).
With the launch of the system, the existing method of searching thousands of images per examination with the ‘naked eye’ has been revolutionized for the trademark and design examiner, greatly reducing the time required for examination and improving examination accuracy.
The main function of the image search system is to compare an applied image with previously registered images and then show the results in order of similarity. It is noteworthy that it is possible to search by recognizing a partial image among images in which multiple parts are combined.
Source: www.pkkim.com
Mar 11, 2021 (Newsletter Issue 5/21)
Accession to Madrid System
On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO. The Protocol will enter into force for Pakistan on May 24, 2021.
Starting May 24, 2021, local brand owners in Pakistan can begin using the Madrid System to protect their trademarks in the 123 territories of the System’s other 107 members by filing a single international application and paying a single set of fees.
With its straightforward designation process, foreign companies and trademark owners can, from May 24, 2021, seek trademark protection through the Madrid System when selling their products and services in the Islamic Republic of Pakistan.
Source: www.wipo.int
Mar 11, 2021 (Newsletter Issue 5/21)New Official Online Services Platform from Mid 2021IP Australia informs that a new online services platform will fully replace the current eServices from July 1, 2021.
This means that all customers will need to file and manage their IP rights in the new online services. It features a streamlined application experience and contextual guidance to help to apply for and manage IP rights quickly and easily.
Over the coming months, online services will be upgraded in a staged approach to cater for all transactions. To access the new online services platform, simply use the existing eServices details to log in or sign up here Source: www.ipaustralia.gov.au Mar 11, 2021 (Newsletter Issue 5/21)Designs Amendment Bill 2020On December 2, 2020, the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was introduced into the Senate and is currently before Parliament for consideration.
The Bill includes proposals that will amend the Designs Act 2003 to implement several recommendations accepted by the government made by the former Advisory Council on Intellectual Property’s Review of the Designs System.
The main changes will be the following:
- Provides a period of 12 months for filing a design application after it is first disclosed.
- Protects third parties from infringement of designs if they started using a design before an application for registration is filed.
- Removes the option to publish a design without registration and simplifies the process of requesting registration.
- Protects ‘innocent infringers’ who infringe a design between filing and registration but have no way to know the design is protected.
- Allows exclusive licensees of design rights to take action against infringers without needing to rely on the design’s owner.
- Streamlines the process for changing and specifying formal requirements for design applications.
- Makes minor technical changes to clarify some matters in designs legislation.
More information can be seen hereSource: www.ipaustralia.gov.au Mar 11, 2021 (Newsletter Issue 5/21)
More IPR Service Centers to Be Established
In 2020, China plans to set up 20 more intellectual property rights (IPR) centers nationwide to offer quicker services and reduce duration and cost of IPR protection.
The IPR protection centers address difficulties in obtaining evidence and reduce processing time and costs involved with IPR disputes, while the fast IPR service centers aim to provide county-level industry clusters quick IPR review, verification and protection.
So far, more than 60 IPR protection centers and fast IPR service centers have been established.
Source: www.afdip.com
Mar 11, 2021 (Newsletter Issue 5/21)Trademark e-Filing IntroducedThe Intellectual Property Directorate at the Ministry of Commerce, Industry and Investment Promotion announced that all intellectual property services will be gradually handled online, starting with the filing of new trademark applications as of March 7, 2021.
The online service is provided via the PTO's own "Invest Easy" portal and is to replace the previous procedure, which required the personal presence of a representative for the filing of new trademark applications in paper form.
The Intellectual Property Directorate also informed that for the use of the online portal for all trademark matters, a fee of 20 % will be charged on the official fees paid, capped at a maximum increase of OMR 20 (approx. USD 52) per application. This online system will gradually cover all other IP actions.
Source: JAH & Co. IP, Qatar Feb 25, 2021 (Newsletter Issue 4/21)
Digital Trademark Certificates Only
The Russian Patent and Trademark Office has published updated regulations regarding the automation of the entire process of generation and issuance of trademark registration certificates. As of January 17, 2021, all trademark registration certificates will be generated in digital format for all applications. Paper version can only be obtained by submitting a specific petition to the Office.
Source: www.agip.com
Feb 25, 2021 (Newsletter Issue 4/21)International Trademark Applications under Madrid System by E-Mail No Longer AcceptedAs on January 11, 2021, the Russian Patent and Trademark Office informs no longer accepts the filing of international trademark applications by email via fips_Madrid@rupto.ru. Applications are now requested to submit their international trademark applications under the Madrid System in Russian via the FIPS Personal Desk
All related correspondence will be received via the applicants account unless a written request has been made that the correspondence shall be sent in paper.
Source: www.rospatent.gov.ru Feb 25, 2021 (Newsletter Issue 4/21)Japan-Taiwan Concordance List of Similar Group Codes PublishedOn January 25, 2021, the Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2021 (NCL11-2021).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
The concordance list is available as PDF list and as Excel table
More information can be seen on JPO's website hereSource: www.jpo.go.jp Feb 25, 2021 (Newsletter Issue 4/21)Japan-Taiwan Concordance List of Similar Group Codes PublishedOn January 25, 2021, the Japanese Patent Office (JPO) published the Japan-Taiwan Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, version 2021 (NCL11-2021).
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination, and therefore classified into a group. The Japan-Taiwan Concordance List of Similar Group Codes aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO or the Taiwan Intellectual Property Office (TIPO) to utilize this List when searching for the existence of already registered trademarks.
The concordance list is available as PDF list and as Excel table
More information can be seen on JPO's website hereSource: www.jpo.go.jp Feb 25, 2021 (Newsletter Issue 4/21)Official Fees on Renewals ChangedThe Patent Office of Kazakhstan (Kazpatent) has made changes in the official fees on the renewal of a trademark, service mark and publication of information on renewal.
Starting from January 1, 2021, the fee for renewal of trademark registration increased to KZT 97,144.32 for up to 3 classes and KZT 16,993.76 for each additional class. Small and medium-sized businesses will receive a discount of 50 percent in the period from 1 January 2021 to 31 December 2021 for this service and a discount of 25 percent in the period from 1 January 2022 to 31 December 2022. The benefits of receiving a discount will be cancelled as from 1 January 2023.
Further, the discount of 15 percent for filing trademark and collective trademark applications in an electronic format has been abolished by the Office.
More information on the official order can be found here
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Feb 25, 2021 (Newsletter Issue 4/21)
New Online Services
On January 29, 2021, the State Patent Bureau of the Republic of Lithuania (SPB), with the support of the EUIPO’s European cooperation project ECP1, has improved the e-filing and e-services tools available by integrating these with the Register of Legal Entities and the Register of Addresses.
The front office platform, available via the SPB website, now allows Lithuanian users to file applications and requests electronically, to automatically retrieve addresses and company data from the official Register of Legal Entities and the Register of Addresses.
Source: www.euipo.europa.eu
Feb 25, 2021 (Newsletter Issue 4/21)Copyright Law AmendedOn November 11, 2020, the latest amendment of the Copyright Law has been passed by the Standing Committee of the National People’s Congress of the PRC. It will come into force on June 1, 2021.
Some significant changes are the following:
- Punitive damages and an increase in statutory damages added
- Term cinematographic work / work similar to cinematography replaced by term audio-visual work
- Right of broadcasting expanded
- Work type definition extended
- Exploitation of a work of co-authorship improved
- Technical measure of right owner protected
For further information, please check the article of our Country Index Partner, the law firm P. C. & Associates here
Source: P. C. & Associates, China Feb 25, 2021 (Newsletter Issue 4/21)
New Administrative Courts Law Issued
On January 11, 2021, the new Administrative Courts Law No. 41 of 2020 was issued in the Westbank and published in the Official Gazette.
The new law stipulates that administrative justice should take two stages: the Administrative Court and the Administrative High Court.
Any interested party damaged from an administrative decision, including the decisions related to trademarks, patents and industrial designs, can oppose such a decision before the Administrative Court within 60 days. The issued decision can be appealed before the Administrative High Court within 30 days. The Administrative High Court decisions are final and cannot be subject to appeal before any other judicial entity.
Source: www.agip.com
Feb 11, 2021 (Newsletter Issue 3/21)
First Bulgarian Authenticities Certified in European Cooperation Project
On November 18, 2020 and December 22, 2020, the municipalities of Sofia and Plovdiv became the first certified Bulgarian ‘Authenticities’ under the framework of the European Cooperation Project (ECP8) ‘European Network of Authenticities’.
Following a Memorandum of Understanding signed between the Patent Office of the Republic of Bulgaria and both municipalities, and in cooperation with different stakeholders, a series of IP-related awareness-raising activities will take place locally over the next two years in the newly certified Authenticities.
This European Cooperation Project aims to raise awareness, among local policymakers, businesses and the European public, of both the value of IP and the damaging effects of counterfeiting in European cities.
Source: www.euipo.europa.eu
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification to Geneva Act of Lisbon Agreement on Appellations of Origin and GI
On January 21, 2021, the WIPO notified the deposit by the Government of the French Republic of its instrument of ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement), adopted at Geneva on May 20, 2015.
The Geneva Act of the Lisbon Agreement will enter into force, with respect to the French Republic, on April 21, 2021.
Source: www.wipo.int
Feb 11, 2021 (Newsletter Issue 3/21)Designs (Amendment) Rules 2021 IssuedOn January 25, 2021, the Government of India issued a gazette notification to formalize and introduce the Designs (Amendment) Rules, 2021 and came into force with effect of the same date.
Some of the key amendments are the following:
- Adoption of latest Locarno Classification
- Introduction and definition of start-ups
- Revised fees and relief for natural persons, start-ups, and small entities
For further information, please check the article of our Country Index Partner, the law firm Chadha & Chadha IP here
Source: Chadha & Chadha IP, India Feb 11, 2021 (Newsletter Issue 3/21)Communication Procedures by CIPO for International RegistrationsThe Canadian Intellectual Property Office (CIPO) has provided information to WIPO on the communication procedures followed by CIPO in respect of international registrations designating Canada.
Holders can communicate directly with CIPO as holders are not required to appoint a Canadian trademark agent to represent them before CIPO. If a trademark agent is appointed, CIPO can only communicate with a representative appointed before WIPO if this person is a Canadian trademark agent.
A courtesy letter is sent by CIPO to the agent when WIPO has notified CIPO of a designation of Canada in an international registration. In the event of a provisional refusal, both the holder and the agent may respond.
CIPO will send to WIPO all communications under Rules 17, 18ter and 19 of the Regulations under the Madrid Protocol, such as, statements of grant of protection, notifications of provisional refusal, statements concerning final or further decisions and notifications of invalidation.
Upon receipt of such communications from CIPO, WIPO will transmit a copy of them to the holder or to the appointed agent, if any. As a courtesy, CIPO will also send copies of these communications directly to the holder or to the agent. All other communications from CIPO will only be sent to the holder or agent.
More information on the notice, please click hereSource: www.wipo.int Feb 11, 2021 (Newsletter Issue 3/21)
Name of IP Office Changed
On December 28, 2020, the Intellectual Property Department of the Economy Services Directorate of Macau, SAR, announced through Administrative Regulation No. 45/2020 the change of its official name to Economic and Technological Development Bureau. The name change went into effect on February 1, 2021.
All documents presented, including the name of the Directorate in the powers of attorney, assignment contracts and other documents signed as of that date, must contain the updated name.
Source: www.inventa.com
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On January 12, 2021, Kazakhstan deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol shall enter into force three months after depositing its instrument of ratification in respect of Kazakhstan.
Source: www.eapo.org
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On January 11, 2021, Russia deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol shall enter into force three months after depositing its instrument of ratification in respect of the Russian Federation.
Source: www.eapo.org
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On December 17, 2020, Armenia deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol on the Protection of Industrial Designs shall enter into force on March 17, 2021, in respect to the first three states that have ratified it - the Republic of Armenia, the Republic of Azerbaijan and the Kyrgyz Republic.
Source: www.eapo.org
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On December 9, 2020, Azerbaijan deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol on the Protection of Industrial Designs shall enter into force on March 17, 2021, in respect to the first three states that have ratified it - the Republic of Azerbaijan, the Republic of Armenia and the Kyrgyz Republic.
Source: www.eapo.org
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On October 15, 2020, Kyrgyzstan deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol on the Protection of Industrial Designs shall enter into force on March 17, 2021, in respect to the first three states that have ratified it - the Kyrgyz Republic, the Republic of Armenia and the Republic of Azerbaijan.
Source: www.eapo.org
Feb 11, 2021 (Newsletter Issue 3/21)Common Practice on Likelihood of Confusion / Relative Grounds of RefusalOn Janurary 14, 2021, the State Agency on Intellectual Property (AGEPI) announced the adoption of the Practice Paper Likelihood of Confusion (impact of non-distinctive/weak components) - Relative Grounds of Refusal.
This Practice Paper has been prepared in line with the Common Communication resulting of the Common Practice of Trademarks developed by the European Union Intellectual Property Network (EUIPN) and aimed to give guidance regarding the impact of non-distinctive/weak components of the marks at issue on the assessment of likelihood of confusion. It has been tailor-made to the specificities of AGEPI, providing for an overview of the Office’s quality standards for substantive examination of trademarks.
The document provides a clear and comprehensive explanation of the principles on which the common practice of trademarks will be based. These principles will be generally applied and are aimed at covering the large majority of cases.
The document is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the specific criteria applicable in each case.
The practice paper can be seen in English and Romanian.Source: www.agepi.md; www.euipo.europa.eu Jan 28, 2021 (Newsletter Issue 2/21)Extension of Several Treaties and Agreements to Guernsey and/or Isle of ManOn December 23, 2020, the United Kingdom of Great Britain (UK) and Northern Ireland deposited the following declarations with WIPO for the international relations of which the UK is responsible:
- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the United Kingdom's ratification of the PCT (see PCT Notification No. 13), shall be extended to Guernsey;
- the United Kingdom's ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act) (see Hague Notification No. 133), shall be extended to Guernsey;
- in accordance with Article 13 of the Locarno Agreement Establishing an International Classification for Industrial Designs (Locarno Agreement), the United Kingdom's accession to the Locarno Agreement (see Locarno Notification No. 55), shall be extended to the Isle of Man; and
- in accordance with Article 13 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to Guernsey and the Isle of Man.
The said declarations shall enter into force, with respect to the territories as stipulated in the respective declarations, on March 23, 2021.
More information on the notice, please click hereSource: www.wipo.int Jan 28, 2021 (Newsletter Issue 2/21)
Fast Track for Trademarks
On December 15, 2020, the Patent Office of the Republic of Bulgaria (BPO), with the support of the EUIPO’s European Cooperation Service, has improved the service it provides to its users with the launch of a new release of the front office system supporting trademark and design applications and related e-services.
The front office platform, available via the BPO website, now allows users to take advantage of a set of new features, such as:
- fast-track applications for trademarks and designs;
- improved user interface for goods and services;
- improved functionality for filling out the application form using pre-registered data;
- possibility to easily check the details of registered trademarks and designs in TMview and DesignView.
Source: www.euipo.europa.eu
Jan 28, 2021 (Newsletter Issue 2/21)Trademark Modernization Act SignedOn December 27, 2020, the Trademark Modernization Act of 2020 (TMA) was signed making several changes to the Lanham Act. The TMA provides new procedures to challenge applications and registrations with inaccurate claims of use. It will be implemented by December 27, 2021.
Major changes are the following:
-Two new ex parte post-registration proceedings to cancel unused trademarks
The TMA introduces the Expungement proceeding, which provides that any party may petition the USPTO to expunge a registration for a trademark that has never been used in commerce. This new procedure must be brought between three to ten years after the registration date.
Further, the TMA implements the Re-examination proceeding, which provides that any party may petition the USPTO to re-examine any registration on the grounds of non-use as of the date of the registrant’s declaration under oath that the mark is in use for up to five years from the date of such declaration.
- New ground for cancellation proceeding
The TMA provides a new ground which is substantively equivalent to the expungement claim that a registered trademark has never been used in commerce, as described above, but may be brought at any time following three years from registration.
- Flexible response periods for office actions
The TMA enables the USPTO to shorten Office Action response deadlines from the current six-month period to a time period ranging from 60 days to six months. The applicant may request extensions to have the full six months. The Director may set the number, length and fee for extensions of time by rule.
- Third-party submissions during examination (Letters of Protest)
The TMA provides statutory authority for the longstanding USPTO Letter of Protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a trademark’s registrability. The TMA sets a two-month deadline for the USPTO to act on these submissions and authorizes the Office to charge a fee for them. The TMA also provides that the USPTO's decision on whether to include the evidence in the application record is final and non-reviewable.
- Creating a uniform rule establishing a rebuttable presumption of irreparable harm
The TMA also provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This uniform rule will help trademark owners enforce their rights against infringers in federal court. No rulemaking is necessary to give effect to this provision.
The USPTO has created an informational webpage on the TMA, identifying key provisions, and an email box to ask questions and provide feedback. The webpage will be updated as additional information becomes available. To enter the website, please hereSource: www.uspto.gov Jan 28, 2021 (Newsletter Issue 2/21)
Renewal Possible via New Online Services Platform
IP Australia informs that user can now renew all of their IP rights through the new online services platform, and file new design right applications using the streamlined new services. In the coming weeks, it will also be possible to file new trademark applications via the new platform. Users can continue to access all other services via eServices after logging in.
Source: www.ipaustralia.gov.au
Jan 28, 2021 (Newsletter Issue 2/21)
Registration of Collective Marks Containing Geographical Indications
The Saudi Authority for Intellectual Property (SAIP) has recently launched a service for the registration of collective marks containing geographical indications in line with the international practices.
SAIP explained that collective marks containing geographical indications can be registered for products that have specific geographical origin, specifications or reputation attributed to that origin. The registration of such collective marks contributes to the distinction of geographical origin, materials, manufacturing method and other common characteristics of goods or services.
Source: www.agip.com
Jan 28, 2021 (Newsletter Issue 2/21)
Front and Back-Office Systems Enhanced
The Romanian State Office for Inventions and Trademarks (OSIM) has enhanced its front-office and back-office applications with added capabilities. The front-office has been expanded with five new online services for trademarks: limitation, withdrawal, licensing rights, oppositions and observations. From now on, users will be able to file trademark applications using these services.
User interface enhancements and new back-office software features enable users to make more efficient use of the tool while simultaneously benefiting from performance improvements during their day-to-day activities.
Source: www.euipo.europa.eu
Jan 14, 2021 (Newsletter Issue 1/21)Extension of UK International Registrations to Gibraltar and GuernseyOn October 1, 2020, the United Kingdom of Great Britain and Northern Ireland deposited a declaration with WIPO stating that the United Kingdom’s ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, as from January 1, 2021.
Gibraltar
The Protocol will apply to Gibraltar in respect of designations of the United Kingdom in international registrations and in subsequent designations bearing a date of January 1, 2021, or later.
Guernsey
Applicants and holders may designate the Bailiwick of Guernsey in international applications and in subsequent designations bearing a date of January 1, 2021, or later. The IP Office of the Registrar in Guernsey will be the Office of the designated Contracting Party in respect of any designation of the Bailiwick of Guernsey recorded in the International Register. It will also be the Office of origin for international applications originating of Guernsey.
More information on the notice, please click hereSource: www.wipo.int Jan 14, 2021 (Newsletter Issue 1/21)IP Office Provides Madrid e-FilingStarting December 1, 2020, the Norwegian Industrial Property Office (Patentstyret) has given access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
More information on the notice, please click here
Source: www.wipo.int Jan 14, 2021 (Newsletter Issue 1/21)
Fast Track for Trademarks
On December 10, 2020, the Patent Office of the Republic of Latvia, with support of the EUIPO’s European Cooperation Projects, launched a fast track function for new trademark applications in both its front and back office systems. Users will now be able to benefit from this service via the office’s web page. A fast track smart guide is built into the front office system to assist users to meet the criteria when filing for fast track applications.
Source: www.euipo.europa.eu
Jan 14, 2021 (Newsletter Issue 1/21)Manual on Geographical Indications PublishedOn January 5, 2021, the Brazilian Patent and Trademark Office (BPTO) published the first edition of the Geographical Indications Manual. It aims to increase the quality, transparency and uniformity of Geographical Indication examination practices and provides instructions and guidance for examiners, prosecutors and users in general.
The first edition of the Geographical Indications Manual enters into force on February 1, 2021 and was made official by Administrative Rule INPI / PR nº 415, of December 24, 2020, published in the Industrial Property Magazine (RPI).
The Manual can be accessed hereSource: www.gov.br Jan 14, 2021 (Newsletter Issue 1/21)New IPO Offices EstablishedOn October 14, 2020, the Law No. 703-IX on the Creation of The National Intellectual Property Authority entered into force in Ukraine. The Law establishes the National Intellectual Property Authority (NIPA). It was expected that the NIPA would be a new state organization, absorbing the function of the State Enterprise Ukrainian Intellectual Property Institute (Ukrpatent) along with several functions of the Ministry for Development of Economy, Trade and Agriculture (MDETA). However, the new status of the Ukrpatent and its newly assigned functions are not explicitly outlined.
The NIPA will be responsible for the following:
- examination of applications for IP registration;
- registration of IP and issuance of patents and certificates;
- invalidation of certain types of IP registrations (post-grant oppositions procedure);
- publication of official information, maintenance of IP rights registries, provision of excerpts and extracts, etc.
More information can be seen here and hereSource: www.ukrpatent.org; www.petosevic.com; www.bakerxchange.com Jan 14, 2021 (Newsletter Issue 1/21)Key IP Changes from 1 January 2021On January 1, 2021, the transition period has ended. European Union laws and regulations are no longer applicable in the UK. IP rights with unitary validity throughout all EU Member States are no longer effective.
The government of the United Kingdom provides key information how the IP system and Intellectual Property Office (IPO) will now operate. Key changes from January 1, 2021 are the following:
Legal representatives
UK attorneys will be unable to represent clients on new applications or new proceedings at the EU Intellectual Property Office (EUIPO).
UK address for service
An address for service in the UK (includes the Isle of Man), Gibraltar or the Channel Islands is required for new applications and new requests to start contentious proceedings before the IPO. This applies to all registered IP rights (patents, trademarks, and designs).
Customs Enforcement
IP right holders are advised to check their existing Application for Action (AFA) to ensure that they are still valid.
From January 1, 2021, UK national and EU Customs AFAs granted by the Customs authorities in the UK continue to remain in place in relation to the UK only.
Any EU AFAs granted by the Customs authorities of another EU Member State no longer cover the UK. EU AFAs granted by the UK Customs authorities will no longer cover remaining member states of the EU after January 1, 2021.
Trademarks
From January 1, 2021, UK brand holders can still apply for and hold EU trademarks (EUTMs). However, EUTMs are valid in the 27 EU Member States only and no longer in the UK.
EU Trademarks (EUTM)
From January 1, 2021, the IPO will create a comparable UK trademark for every registered EU trademark (EUTM).
No certificate of registration is issued but owners of this new right are able to access the information online or obtain a certified copy of the registration. The comparable UK trademark is a fully independent UK trademark which can be challenged, assigned, licensed or renewed separately from the corresponding EUTM.
Holders of applications for EUTMs which are not registered at the end of the transition period will have a period of nine months to apply in the UK for the same protection.
International Registrations designating the EU
From January 1, 2021, the IPO will create a comparable UK trademark for every International Trademark Registration designating the European Union. Each new comparable trademark (IR) is treated as if applied for and registered under UK law. As such, it may be challenged, assigned, licensed or renewed separately from the original international registration.
Holders of International Registration designating the EU which are pending on 1 January 2021, will be able to apply to register a UK trademark in the nine months after 1 January 2021 and retain the filing date of the pending EU designation.
More detailed information can be seen on IPO's Website hereSource: www.gov.uk; www.dyoung.com Jan 14, 2021 (Newsletter Issue 1/21)First Steps towards Ratification of Madrid ProtocolThe Instituto Nacional de Propiedad Industrial (INAPI) informs the draft Agreement approving the Protocol concerning the Madrid Agreement on the international registration of trademarks was submitted to the first constitutional procedure for ratification on December 2, 2020.
For more information, please refer to INAPI's website here (in Spanish only)Source: www.inapi.cl Jan 14, 2021 (Newsletter Issue 1/21)Customs Enforcement Post-BrexitOn December 3, 2020, the HM Revenue and Customs (HMRC) provides detailed information on the UK customs enforcement reminding to apply for protection against infringements of intellectual property rights on imports into and exports out of the UK from 1 January 2021.
From January 1, 2021, UK rights holder will need to file a new UK Customs Application for Action (AFA) via the HMRC portal using the online form here. The form can only be accessed using a Government Gateway ID and password.
If a rights holder has filed an EU-wide Application for Action through HMRC, the AFA will remain valid and enforceable in the UK. However, it will cease to have effect outside the UK after 31 December 2020. Rights holders will need to file a separate EU-wide AFA through an EU27 Customs Authority via the European Website here.
If a rights holder has already filed an EU-wide AFA via one of the EU27 Customs Authorities before 31 December 2020, the AFA will remain valid in the remaining 27 EU Member States. However, it will no longer have effect within the UK. A separate application will need to be filed through the HMRC portal.
More information can be accessed here and hereSource: www.gov.uk; www.twobirds.com Dec 03, 2020 (Newsletter Issue 20/20)
UK Address for Service after Brexit Required
From January 1, 2021, a UK address (or Channel Island address) for service is required for new trademark, design and patent applications, new oppositions, and other proceedings the Government confirmed. Currently, a correspondence address within the other 30 countries of the European Economic Area (EEA) could be used in proceedings.
A UK address for service will not be required for the renewal of existing registered or granted rights. The rules will include transitional provisions for ongoing cases. The EU Trade Mark and Registered Community Design rights that will be re-created on the UK register will not need a UK address for service in the three years following the end of the transition period, as per the terms of the UK’s withdrawal agreement with the EU (Article 55(2)).
The changes will come into force from January 1, 2021 as long as parliamentary time allows them to be tabled before end of the year.
Source: www.gov.uk
Dec 03, 2020 (Newsletter Issue 20/20)
First Design of Graphic Image Registered
On November 9, 2020, the Ministry of Economy, Trade and Industry announced that the a graphic image has successfully been registered under the Design Act for the first time in Japan.
The Japanese Design Act was drastically revised to grant exclusive rights over graphic design images, enhancing innovation and competitiveness of companies in 2019 and came into force on April 1, 2020.
Source: www.harakenzo.com; www.meti.go.jp
Dec 03, 2020 (Newsletter Issue 20/20)Japan-China-Korea Concordance List of Similar Group Codes PublishedOn November 16, 2020, the Japanese Patent Office (JPO) informed about the publication of the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, Version 2020 (NCL(11-2020)).
The compilation of the Concordance List of Similar Group Codes is a cooperative project between the Japanese Patent Office (JPO), the Chinese National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), indicating the corresponding relationships among the respective similar group codes used for trademark examination at the JPO, the CNIPA and the KIPO.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
The concordance list is available as an Excel table on the JPO website hereSource: www.jpo.go.jp Dec 03, 2020 (Newsletter Issue 20/20)Japan-China-Korea Concordance List of Similar Group Codes PublishedOn November 16, 2020, the Japanese Patent Office (JPO) informs about the publication of the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, Version 2020 (NCL(11-2020)).
The compilation of the Concordance List of Similar Group Codes is a cooperative project between the Japanese Patent Office (JPO), the Chinese National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), indicating the corresponding relationships among the respective similar group codes used for trademark examination at the JPO, the CNIPA and the KIPO.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
The concordance list is available as an Excel table on the JPO website hereSource: www.jpo.go.jp Dec 03, 2020 (Newsletter Issue 20/20)Japan-China-Korea Concordance List of Similar Group Codes PublishedOn November 16, 2020, the Japanese Patent Office (JPO) informs about the publication of the Japan-China-Korea Concordance List of Similar Group Codes corresponding to Nice Classification, 11th edition, Version 2020 (NCL(11-2020)).
The compilation of the Concordance List of Similar Group Codes is a cooperative project between the Japanese Patent Office (JPO), the Chinese National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), indicating the corresponding relationships among the respective similar group codes used for trademark examination at the JPO, the CNIPA and the KIPO.
Similar group codes are the codes assigned to goods and services that are presumed to be similar to each other in trademark examination. The project aims to improve the predictability of examination results, by encouraging users who file trademark applications with the JPO, the CNIPA or the KIPO to utilize the concordance lists when searching for the existence of already registered trademarks.
The concordance list is available as an Excel table on the JPO website hereSource: www.jpo.go.jp Dec 03, 2020 (Newsletter Issue 20/20)Eurasian Economic Union Treaty RatifiedThe State Duma of the Russian Federation has ratified the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union (EAEU). Russia is the first EAEU member state to ratify the Treaty.
The Treaty will enter into force after all remaining EAEU member states such as Armenia, Belarus, Kazakhstan and Kyrgyzstan have completed the necessary domestic procedures and provide the written notifications to the depositary.
After the Treaty comes into force, it will be possible to submit a single application for registration of a trademark or appellation of origin in order to obtain protection in EAEU member states.
Source: Mikhailyuk, Sorokolat and Partners Dec 03, 2020 (Newsletter Issue 20/20)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs
On November 20, 2020. WIPO notifies the deposit by the Government of the Lao People's Democratic Republic of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement), adopted at Geneva on May 20, 2015.
The Geneva Act of the Lisbon Agreement will enter into force, with respect to the Lao People's Democratic Republic, on February 20, 2021.
Source: www.wipo.int
Dec 03, 2020 (Newsletter Issue 20/20)
IP Office Provides Design e-Filing Now
As of December 1, 2020, the Industrial Property Organisation in Greece (OBI), with the support of the EUIPO’s European Cooperation Service, improved its digital services with the launch of a new online platform to file applications for design registrations electronically.
The new front office platform allows users to take advantage of a set of new features, such as:
- user authentication, using a custom authentication mechanism provided by the Greek General Secretariat of Information Systems for Public Administration (GSIS / taxisnet);
- integration with an external e-payment system, supported by one of Greece’s 4 primary banks;
- seamless integration with the existing OBI back office system for designs;
- compliance with General Data Protection Regulation (EU) 2016/679.
Source: www.euipo.europa.eu
Dec 03, 2020 (Newsletter Issue 20/20)
New eService Launched
The Austrian Patent Office (ÖPA – Österreichisches Patentamt) has launched a new ‘Trade Mark Opposition’ eService for trademarks.
The new digital service became available on 15 November 2020.
Source: www.euipo.europa.eu
Dec 03, 2020 (Newsletter Issue 20/20)Automatic Recognition of TRIPS Agreement by SAPI AnnouncedOn November 9, 2020, the Autonomous Intellectual Property Service (SAPI) signed Official Notice No. DG-09-2020 dated October 1st, 2020, announcing the automatic recognition of the TRIPS agreement and other International Treaties (Paris Convention for the Protection of Industrial Property) as preferred and immediate applicability over national legislation.
As of October 1st, 2020, the direct application of substantive and adjectival rules for obtaining and defending all IP rights that are more favorable to the holders of patents and trademarks included in the Trade-Related Aspects of Intellectual Property Rights (TRIPS) are in force both before the National Patent and Trademark Office (SAPI) and in the Courts and National Courts in Administrative Litigation.
In cases where the Trade-Related Aspects of Intellectual Property Rights (TRIPS) do not establish any specific procedures for filing, obtaining, opposition and monitoring IP rights, the SAPI will continue to apply those contained in the national Industrial Property Law.
With regard to trademarks and geographical indications, the following issues may be concerned:
- Trademark examiners will need to have much broader criteria to determine whether a trademark is registrable or not.
- Renewals of trademark registrations filed within the grace period of six months after expiration should be accepted.
- Recognition of well-known and non-traditional trademarks.
- Recognition of geographical indications.
More information can be seen here. An English translation (by our contributor) of the Official Notice can be found here
Source: Pi360 LEGAL, Venezuela Nov 19, 2020 (Newsletter Issue 19/20)Withdrawal of Notification on Division of Intl. Registrations On November 13, 2020, WIPO received a communication from the Office of Colombia withdrawing the notification made by Colombia under Rule 40(6) of the Regulations under the Madrid Protocol (“Regulations”).
Such withdrawal will become effective on January 4, 2021.
Consequently, as from January 4, 2021, the Office of Colombia will be able to present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations.
For more information, please click hereSource: www.wipo.int Nov 19, 2020 (Newsletter Issue 19/20)Declarations on Accession to Madrid ProtocolOn October 12, 2020, the Government of Trinidad and Tobago deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Trinidad and Tobago wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Trinidad and Tobago requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Trinidad and Tobago will not present to WIPO requests for the merger of international registrations resulting from division because the law of Trinidad and Tobago does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).
The Madrid Protocol will enter into force, with respect to Trinidad and Tobago, on January 12, 2021.
For further information, please refer to Information Notice No. 63/2020 hereSource: www.wipo.int Nov 19, 2020 (Newsletter Issue 19/20)
Online Counterfeit Product Prevention Measures Planned
The Korean Intellectual Property Office (KIPO) announced ‘online counterfeit product prevention measures’ at a meeting of the COVID-19 Central Disaster and Safety Countermeasure Headquarters.
KIPO prepares current measures to efficiently block the rapidly increasing online distributions of counterfeited products and to minimize consumer damages by the limited crackdown manpower.
The Office plans to preemptively block consumer damage. Experts of KIPO will temporarily be involved in online monitoring, to expand and conduct the measures of restraining sales by deleting the relevant posts and closing the relevant sites, focusing on the areas threatening the public health and safety.
In addition, as to the relevant mass distributors and regular sellers, the trademark special judicial police will intensively investigate and block the distribution of counterfeit products. In the mid to long term, the investigation manpower will be reinforced and the advancement of investigation techniques, such as digital forensics, etc., will be carried forward in preparation for a continuous increase of online distribution.
Moreover, KIPO plans to improve the effectives of consumer damage relief by the cooperation of the trademark owner and online platform company. Furthermore, an amendment to the Trademark Law has been taken forward to impose to make the product seller responsible for preventing trademark infringement.
Source: www.pkkim.com
Nov 19, 2020 (Newsletter Issue 19/20)
Official Fees to Be Increased
The United States Patent and Trademark Office (USPTO) is setting and adjusting Trademark and Trademark Trial and Appeal Board (TTAB) fees.
As of January 2, 2021, the filing fee is USD 350 per class when using TEAS Standard and USD 250 per class when using TEAS Plus.
Source: www.uspto.gov
Nov 19, 2020 (Newsletter Issue 19/20)
IP Office New Online Services
As of November 2, 2020, the Slovenian Intellectual Property Office (SIPO), with the support of the EUIPO’s European cooperation projects, improved the e-filing service it provides to its users following the implementation of Directive (EU) 2015/2436.
The front office platform via the SIPO website now allows users to file applications electronically for the new types of trademarks (position, pattern, motion, multimedia, hologram). Slight modifications, in accordance with Directive (EU) 2015/2436, have been implemented for colour and sound marks.
Source: www.euipo.europa.eu
Nov 19, 2020 (Newsletter Issue 19/20)
Trademark and Design Dossiers Digitized
On October 30, 2020, the Slovenian Intellectual Property Office (SIPO) completed the digitisation of its paper dossiers relating to trademarks and designs under the ECP5 project: Capture and Store Historical Files (CSHF).
The CSHF project, carried out within the framework of European Cooperation Projects, aims at digitising paper dossiers across EU national Intellectual Property Offices to enable easy and rapid access to documentation and data related to trademark and design dossiers.
Source: www.euipo.europa.eu
Nov 19, 2020 (Newsletter Issue 19/20)
Back Office System Enhanced
On November 4, 2020, the Estonian Intellectual Property Office (EPA), with the support of the EUIPO’s European Cooperation Projects (ECP2), has implemented an enhanced back office system.
The upgrade is mainly designed to enhance the user experience with the visualisation of the process of proceedings, partial claims and formalities in order to increase users’ efficiency and operational effectiveness.
Source: www.euipo.europa.eu
Nov 05, 2020 (Newsletter Issue 18/20)Ratification of EAEU TreatyOn October 27, 2020, the State Duma of the Russian Federal Assembly discussed and adopted the Draft Federal Law On Ratification of the Treaty on Trademarks, Service Marks and Appellations of Origin of the Eurasian Economic Union (EAEU).
The Treaty will enter into force after all EAEU member states have completed the necessary domestic procedures and provide the written notifications to the depositary.
After the Treaty has come into force, it will be possible to submit a single application for registration of a trademark or appellation of origin in order to obtain protection in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
The receiving office processes the regional application, carries out a formal examination, and submits the application to other offices for substantial examination. If the protection cannot be granted in all the EAEU states, the regional application can be converted into a national one.
Source: Mikhailyuk, Sorokolat and Partners and www.rospatent.gov.ru Nov 05, 2020 (Newsletter Issue 18/20)
Back Office System Enhanced
On October 15, 2020, the Spanish Patent and Trademark Office (SPTO), with support from the EUIPO’s European cooperation projects, completed its technical stack upgrade of the designs front office system. This followed a set of improvements to the back office system on 10 October.
The technical stack upgrade was designed to increase the security, performance and efficiency of the front office system used at the SPTO. As from now, general system maintenance will be simpler, and users will experience reduced response times and improved data validation.
The back office improvements, meanwhile, will automate some parts of the examination process, which will reduce potential delays and avoid manual data entry errors.
This release also included the proof of use functionality, which was required in order to comply with the new trademark regulations related to opposition to designs that are based in a trademark.
Source: www.euipo.europa.eu
Nov 05, 2020 (Newsletter Issue 18/20)
Labeling of Tobacco Products Mandatory
On September 10, 2020, Kazakhstan adopted Resolution No. 568 introducing mandatory labeling of tobacco products. The labeling requirements entered into force on October 1, 2020 for filtered cigarettes, while other types of tobacco products, such as cigars, cigarillos and heated tobacco, will be subject to mandatory labeling from April 1, 2021.
All tobacco products in Kazakhstan will need to include a unique identifier on their packaging, a Data Matrix code, containing information such as the product’s serial number and manufacturer’s name. The sale of tobacco products will only be possible with the use of a 2D barcode scanner, which will read the information contained in the Data Matrix code.
Source: www.petosevic.com
Nov 05, 2020 (Newsletter Issue 18/20)Trademark Examination Guide on Specimens Updated / New Exam Guide on Generic.com TermsOn October 30, 2020, the USPTO informed that they have issued an update to the trademark examination guide titled “Examination of Specimens for Use in Commerce: Digitally Created/Altered or Mockup Specimens.”
The updated guide addresses examination guidelines regarding digitally created or altered and mockup specimens. In particular, the updated guide revises the procedures for requests for information about the use in commerce of such specimens.
The guide can be found here
Further, on October 28, 2020, the USPTO informed that they have issued a new examination guide titled "Generic.com Terms after USPTO v. Booking.com."
The guide sets out procedures for examining applications for generic.com terms, which are any combination of a generic term and generic top-level domain designating an entity or information, such as “.com” or “.biz.”
These procedures were updated in light of United States Patent and Trademark Office et al. v. Booking.com B. V.
The guide can be found hereSource: www.uspto.gov Nov 05, 2020 (Newsletter Issue 18/20)IP Office Extents Scope as Depositing Office of WIPO DASOn October 12, 2020, WIPO informs that the Brazil National Institute of Industrial Property (INPI) notified the International Bureau in accordance with paragraphs 10 of the Framework Provisions that it would extend its scope to Trademark and Industrial Design applications as a depositing office from August 3, 2020.
For more information, please click hereSource: www.wipo.int Nov 05, 2020 (Newsletter Issue 18/20)IP Office to Commence Operations as Depositing Office of WIPO DAS SoonThe French National Institute of Industrial Property (INPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that INPI would commence operation as a depositing Office of WIPO DAS with effect from December 1, 2020.
Technical and operational options adopted by INPI are:
- INPI as a depositing Office will deposit certified copies of patent and utility model applications as priority documents, including PCT applications filed at their Office on and after December 1, 2020, which the applicant specifically requests be made available to the service.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.
For more information, please click hereSource: www.wipo.int Nov 05, 2020 (Newsletter Issue 18/20)IP Office Provides Madrid e-FilingSince October 7, 2020, the Icelandic Intellectual Property Office has given access to Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
Conveniently nestled within the e-Filing service, users will have direct access to Madrid Goods & Services Manager to check the classification of terms in their list of goods and services.
The extension to Madrid e-Filing allows Icelandic brand owners to take advantage of its latest feature: the ability to communicate with their Office of origin and immediately receive and respond to irregularities issued by WIPO electronically. This feature is available to all participating Offices and helps to save a significant amount of time in the processing of international registrations.
For more information, please click hereSource: www.wipo.int Nov 05, 2020 (Newsletter Issue 18/20)New Federal Law for Industrial Property in Force NowOn November 5, 2020, the new Federal Law for the Protection of Industrial Property (FLPIP) entered into force. As previously reported, the purpose of the new law is to adapt local legislation to the commitments made by the Mexican Government during the negotiations of the USMCA, the treaty which replaces NAFTA.
For further information on the relevant changes, please check here (Newsletter Issue 14/20 from Sep 10, 2020).Source: Source: www.basham.com.mx; www.frosszelnick.com Oct 22, 2020 (Newsletter Issue 17/20)
Accession to Madrid Protocol
On October 12, 2020, the Government of Trinidad and Tobago deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General.
The Protocol will enter into force for Trinidad and Tobago on January 12, 2021.
After this date, local brand owners in Trinidad and Tobago can begin using the Madrid System to protect their trademarks in the 122 territories of the System’s other 106 members by filing a single international application and paying a single set of fees.
Source: www.wipo.int
Oct 22, 2020 (Newsletter Issue 17/20)
Back Office System Enhanced
On September 9, 2020, the Greek Trademark Office, with the support of the EUIPO’s European Cooperation Projects, has implemented several functional enhancements to its back office tool by simplifying back office communications, letters and search functionalities in order to increase efficiency and operational effectiveness when using the system.
Source: www.euipo.europa.eu
Oct 22, 2020 (Newsletter Issue 17/20)Intellectual Property Law AmendedAt the seventh plenary meeting of the upper House of Parliament, members of the Senate introduced the Law of the Republic of Uzbekistan "On Implementation of Changes and Additions to Some Legislative Acts of the Republic of Uzbekistan". The Law came into force on October 5, 2020.
The Law concerns 17 laws, including 8 codes and 9 laws. Amendments have also been made to the laws regulating the registration and protection of intellectual property rights.
Main changes are the following:
- The Agency on Intellectual Property of the Republic of Uzbekistan has been renamed the Agency on Intellectual Property under the Ministry of Justice of the Republic of Uzbekistan
- Applications for patents and registration of a trademark, appellation of origin and the right to use an appellation of origin are submitted to the Agency through state information systems
- The trademark registration may be cancelled if the trademark has not been used continuously for the last three years (previously - five).
Source: Mikhailyuk, Sorokolat and Partners Oct 22, 2020 (Newsletter Issue 17/20)Agreement Protecting EU / Chinese Geographical IndicationsOn September 14, 2020, the EU and China signed a bilateral agreement to protect 100 European Geographical Indications (GIs) in China and 100 Chinese GIs in the European Union against usurpation and imitation. This agreement, first concluded in November 2019, should bring reciprocal trade benefits as well as introducing consumers to guaranteed, quality products on both sides.
For more information, please click hereSource: www.ec.europa.eu Oct 22, 2020 (Newsletter Issue 17/20)
Back Office System Upgraded
On September 9, 2020, the Polish Patent Office (PPO), with the support of the EUIPO’s European Cooperation Projects, has upgraded its back office system.
The upgrade is designed to increase the efficiency, operational effectiveness and security of the PPO’s back office system, as well as to make maintenance easier.
Source: www.euipo.europa.eu
Oct 22, 2020 (Newsletter Issue 17/20)
First IP Dispute and Guidance Center Established
On September 7, 2020, the Beijing branch of the National Overseas Intellectual Property Dispute Response and Guidance Center was launched.
As one of the first 10 local sub-centers approved by China's National Intellectual Property Administration (NIPA), Beijing branch will help provide more efficient and convenient services, prevent risk, and give guidance during overseas intellectual property disputes to Chinese companies working in global business.
The national center will provide services online and via a hotline. Meanwhile, each sub-center will cooperate with the national center to establish mechanisms in resource sharing, information submission, coordination, and training.
Source: www.china.org.cn
Oct 22, 2020 (Newsletter Issue 17/20)Co-Ownership of Trademarks Possible NowAs of September 15, 2020, the Brazilian Patent and Trademark Office (BPTO) is accepting applications for trademarks in co-ownership. Co-ownership was already accepted for patents, industrial designs and copyrights.
Under the BPTO’s Resolution 245/2019, co-ownership is possible for new filings as well as for trademarks that were filed or granted prior to the Resolution becoming effective. In both cases, a provision of the Brazilian Law requiring that the applicant or the owner (or in this case, co-applicants and co-owners ) must be engaged directly or indirectly in a commercial activity compatible with the claimed products or services will still apply.
For more information, please check here and hereSource: www.daniel-ip.com Oct 22, 2020 (Newsletter Issue 17/20)Declarations by UK and Northern Ireland on Several TreatiesOn October 1, 2020, WIPO notifies the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declarations:
- in accordance with Article 24(1) of the Paris Convention for the Protection of Industrial Property (Paris Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Paris Convention (see Paris Notification No. 7), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;
- in accordance with Article 31(1) of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Berne Convention (see Berne Notification No. 125), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;
- the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (see Madrid (Marks) Notification No. 66), shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, for the international relations of which the United Kingdom of is responsible;
- in accordance with Article 13 of the Nice Agreement Concerning the Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible; and
- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Treaty (see PCT Notification No. 13), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible.
The respective declarations as stipulated above shall enter into force, with respect to the territories on January 1, 2021.
For more information, please click hereSource: www.wipo.int Oct 08, 2020 (Newsletter Issue 16/20)IP Office No Longer Collects Fees under Madrid ProtocolWIPO informs that they received a communication from the Office of Viet Nam withdrawing the notification made by Viet Nam under Rule 34(2)(b) of the Regulations under the Madrid Protocol (“Regulations”).
Consequently, as from September 1, 2020, the Office of Viet Nam no longer collects and forwards to WIPO the fees due under the Madrid Protocol and its Regulations.
For more information, please click hereSource: www.wipo.int Oct 08, 2020 (Newsletter Issue 16/20)
IP Office System Improved
On September 21, 2020, the Romanian State Office for Inventions and Trademarks (OSIM) successfully integrated its front office and back office systems. As a result, trademarks and designs filed in the front office are automatically available in the back office application without the need for manual intervention.
This has been achieved through the collaboration of the EUIPO and OSIM under the joint cooperation framework.
Source: www.euipo.europa.eu
Oct 08, 2020 (Newsletter Issue 16/20)
IP Office Provides Madrid e-Filing Now
Since September 21, 2020, the Patent Office of the Republic of Bulgaria has given access to Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.
Users also have direct access to Madrid Goods & Services Manager to check the classification of terms in their list of goods and services.
Source: www.wipo.int
Oct 08, 2020 (Newsletter Issue 16/20)First Official Gazette in 2020 Opens Opposition TermOn September 23, 2020, the Libyan Trademarks Office issued its first Official Gazette numbered 1/2020 for the current year. The publication of the Gazette opens a 3-month opposition term and consists trademarks filed in 2010.
It is expected that the Office continue to issue more Gazettes during 2020 to overcome the backlog of trademarks requiring publication and registration. The last Gazette was issued on June 4, 2015 by the Office.
The Gazette can be accessed here
Source: JAH & Co. IP, Qatar Oct 08, 2020 (Newsletter Issue 16/20)
Historical Trademark Files Digitized
The historical files have been digitised in the Patent Office of the Republic of Bulgaria (BPO) which included more than 3,3 million pages, amounting to 77,000 separate trademark dossiers.
The Project aims at digitising paper files across the national and regional intellectual property offices of the EU to enable easy and rapid access to documentation and data related to trade mark and design dossiers.
Source: www.euipo.europa.eu
Oct 08, 2020 (Newsletter Issue 16/20)
Accession to Vienna Agreement
On September 3, 2020, WIPO notified the deposit by Saudi Arabia of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.
The said instrument of accession contained the following declaration:
- In accordance with Article 16(2) of the Vienna Agreement, the Kingdom of Saudi Arabia does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice.
The said Agreement will enter into force on December 3, 2020.
Source: www.wipo.int
Oct 08, 2020 (Newsletter Issue 16/20)Law on Geographical Indications AmendedOn August 29, 2020, the amendments to the Law of the Republic of Belarus "On Geographical Indications" came into force. The changes revise the definition of a geographical indication (GI) and define more precisely the procedure for obtaining GI protection.
GIs are now introduced as a separate object of intellectual property, while earlier they included both name of the origin of goods location and indication of the origin. In addition, it is now necessary to provide the National Center of Intellectual Property (NCIP) with the opinion of the competent authority that the product has special properties, quality, reputation or other characteristics, which are significantly dependent on its geographical origin, natural conditions or human factors peculiar to this geographical object. Previously, only the special properties of the product were taken into account, and now the list of unique characteristics has been expanded. It will allow obtaining protection for more product names in order create a unique image of Belarus.
A similar document must be provided for the renewal of the right to use the GI and should be issued by the competent authority within the last year of a ten-year period from the date of the application. Foreign applicants must provide a document confirming the right to use the GI in the country of origin on the date of renewal.
Further, the official fees charged for registration and renewal have been amended.
Source: Mikhailyuk, Sorokolat & Partners Oct 08, 2020 (Newsletter Issue 16/20)
Accession to Lusaka Agreement
On September 25, 2020, the Republic of Mauritius deposited its Instrument of Accession to the Lusaka Agreement of December 9, 1976 establishing the African Regional Intellectual Property Organization (ARIPO) with the Director General of ARIPO.
In accordance with Article XVI (3) of the Lusaka Agreement, Mauritius became a full member of ARIPO but has not yet acceded to the Harare or Banjul Protocols. Therefore, Mauritius cannot be designated in trademark, design or patent applications filed via the ARIPO system.
At present, Mauritius' new Industrial Property Act 2019 does not contain provisions on the recognition of intellectual property rights granted through the ARIPO system. This would need to be changed in order to accede to the Harare or Banjul Protocols.
Source: www.aripo.org; www.adams.africa
Sep 24, 2020 (Newsletter Issue 15/20)Trademark Act AmendedThe Icelandic Intellectual Property Office (ISIPO) informs that the Trademark Act No 45/1997 was amended to incorporate the European Union trademark directive 2015/2436 into Icelandic law. The changes entered into force on September 1, 2020.
The act contains various new provisions and harmonizes the EU and EEA trademark systems, not only regarding trademarks but also collective marks and guarantee and certification marks. Some of the main changes are the following:
- No requirements for trademarks to be graphically represented
- New non-traditional trademarks are registerable e.g. colours, sounds, holograms and animations
- Change of protection period for trademarks is now 10 years from application date. The protection period of earlier trademarks does not Change.
- Registration requirements of trademarks are clarified, and refusal grounds divided into absolute grounds and relative grounds.
- Clarification on grounds for refusal for trademark applications submitted in bad faith
- In opposition proceedings, trademarks will receive a registration date after the finalisation and possible court proceedings. Only then does the five-year use requirement period begin.
- Any third-party can now file observations prior to registration without having a legitimate interest
- Non-use of trademark is now acceptable as defence in opposition proceedings
- Revocation and invalidity procedures are now separated into different procedures
For further information, please see the article of our Country Index contributor for Iceland, the law firm LEX hereSource: www.lex.is; www.isipo.is Sep 24, 2020 (Newsletter Issue 15/20)Operations as Depositing & Accessing Office of WIPO DAS to Commence SoonThe Mexican Institute of Industrial Property (IMPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that IMPI would commence operation as both a depositing Office and an accessing Office of WIPO DAS with effect from November 3, 2020.
Technical and operational options adopted by IMPI are:
- IMPI as a depositing Office will deposit certified copies of patent, utility model and industrial design applications as priority documents, including PCT applications filed at our Office on and after November 3, 2020, which the applicant specifically requests be made available to the service.
- IMPI as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by November 3, 2020.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI; As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office, namely The Hague International applications, PCT International applications, national industrial design applications, national patent applications and national utility model applications.
For more information, please click hereSource: www.wipo.int Sep 10, 2020 (Newsletter Issue 14/20)
Official Fees Increase Soon
IP Australia informs that the official fees will increase from October 1, 2020. The most significant change effects the increase of the trademark application fees. The official trademark application fees for standard online filing will increase from AUD 330 to AUD 400 per class without pick list. For paper filing, the official fees will increase from AUD 350 to AUD 450 per class without pick list.
When using the option of a pick list of goods and services, whose classifications have been pre-approved, the official application fees stays the same with AUD 250 per class.
Source: www.ipaustralia.gov.au
Sep 10, 2020 (Newsletter Issue 14/20)Exposure Drafts for Designs Act 2003 ReleasedIP Australia released an exposure drafts of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and Regulations 2020 for public consultation.
The amendments proposed include the following changes:
- Introduction of a twelve-month grace period for design registration;
- Amending the existing prior use defence for third parties using a disclosed but unregistered design;
- Simplifying the design registration process via amalgamating the registration and publication processes, including a new publication delay option;
- Expansion of the exclusive licensee’s right to bring infringement proceedings; and
- Reduction of red-tape requirements in the design registration process.
For more Information, please click hereSource: www.kwm.com Sep 10, 2020 (Newsletter Issue 14/20)Update on Comparable UK Trademarks The UK Intellectual Property Office (IPO) has informed the Anti-Counterfeiting Group of some practical steps on administration of trademarks and designs during and post BREXIT. IPO will issue a comparable UK registered trademark for each current EU registered trademark after IP Completion Day on December 31, 2020. Over two million new UK trademarks and designs will be created by this.
The following guidance has been outlined:
- IPO will publish a general website notice at the end of the transition period, in all EU languages, informing rights holders that they now own a UK right trademark.
- IPO does not plan to send rights holders individual lists of the new UK trademarks that they will own.
- Each new UK trademark will be numbered with an identical registration number as the related EU trademark it is granted from, but it shall be prefixed with “009”.
- IPO will not send certificates to rights owners of new rights. Rights holders can print out details of trademarks from the IPO searchable database if they need a record of their new rights.
The full Anti-Counterfeiting Group update can be seen hereSource: www.hoganlovells.com; www.a-cg.org Sep 10, 2020 (Newsletter Issue 14/20)IP Office Current OperationsThe Lebanese IP Office at the Ministry of Economy and Trade has partially resumed its activities as of August 25, 2020, which were suspended as a result of the explosion in Beirut.
The IP Office started receiving patent and design applications, new trademark applications with priority claim, renewals, and annuities, and all recordal applications.
New trademark applications without priority claim will be filed exclusively online, and the examination of these applications will begin after the full resumption of the IP Office's activities. According to the Cabinet Law No. 185 of the Lebanese Cabinet of Ministers, adopted after the explosion, all deadlines which includes renewals, annuities, priorities, filing of documents, legal action, will remain officially extended until December 31, 2020.
Source: JAH & Co. IP, Qatar Sep 10, 2020 (Newsletter Issue 14/20)Fast Track Program for Trademark RegistrationThe Intellectual Property Office of Singapore (IPOS) has expanded the SG IP Fast Track (SG IP FAST) to include the acceleration of trademark and registered design applications. The SG IP FAST is known as the SG Patent Fast Track program that will end on April 29, 2022.
From September 1, 2020, applicants with a patent application accelerated under SG IP FAST can now request acceleration of related trademark and registered design applications. By providing this Extended Service, IPOS intends to better support innovators and enterprises when they are building and managing their IP Portfolio.
For more information, please see hereSource: www.ipos.gov.sg Sep 10, 2020 (Newsletter Issue 14/20)Official Fee Structure AmendedThe Croatian Intellectual Property Office (IPO) amended the regulation on fees on trademark fees, introducing utility model fees and modifying patent examination fees to reflect the changes introduced by the new Croatian Patent Act in February 2020. The changes entered into force on August 8, 2020.
The basic fee for filing or renewing a trademark now only covers one class, and no longer three classes as before. The new official fee for filing a trademark application is HRK 600 for one class and HRK 150 for each additional class. The registration fee is HRK 1,450 for one class and HRK 300 for each additional class.
For more information, please see hereSource: www.petosevic.com Sep 10, 2020 (Newsletter Issue 14/20)New Federal Law for Industrial PropertyOn November 5, 2020, a new Federal Law for the Protection of Industrial Property (FLPIP) will come into force in Mexico. The new law follows the implementation of the United States–Mexico–Canada Agreement (USMCA) on July 1, 2020. The FLPIP will replace Mexico’s Industry Property Law and aims to align Mexican legislation with the USMCA.
Some of the relevant changes are the following:
- Validity of trademarks, slogans and trade names will be counted from the registration date. This will apply for registrations granted after November 5, 2020.
- Declaration that the goods/services are non-deceptive and are free of bad faith when filing and renewing a trademark will be mandatory.
- Declaration of use will only apply in connection with trademarks granted after August 10, 2018. If a declaration of use is not filed, the registration is automatically cancelled. Also, goods/services not included in a use declaration will be automatically cancelled.
- The new law states that not only identical signs but confusingly similar signs to geographical indications and appellations of origin will be objected.
- The definition of bad faith has been narrowed. Now, bad faith is understood as “having applied for the registration of a sign for the purpose of obtaining an undue benefit or advantage to the detriment of its legitimate owner.”
- Letters of consent will be acceptable not only in connection with confusingly similar trademarks but in relation with identical as well.
- After the examination of a trademark, the examiner will issue only one office action comprising formal requirements, citing substantive objections, and informing of any opposition filed against the application. Before it was two office Actions.
- The term to respond to an opposition will be two months instead of one. Such term may be extended.
- The recordal of a license agreement is no longer mandatory. Voluntary recordals are available. Owners still need to prove the licensor-licensee relationship in non-use cancellation actions.
- It becomes easier to have a trademark declared famous or well-known. The trademark needs to gain a "global diffusion or recognition".
- Certification trademarks will be registrable.
For more Information, please click hereSource: www.basham.com.mx; www.frosszelnick.com Sep 10, 2020 (Newsletter Issue 14/20)
Soft Opening Starting on Oct. 1, 2020
On August 28, 2020, the Ministry of Commerce of Myanmar (MOC) issued Order No. 63/2020 to announce the Soft Opening for owners of registered trademarks and used trademarks to file their trademarks under the Myanmar Trademark Law 2019 (MTL2019). The key points of the Order are summarized below:
1. Owners of trademarks already registered with the Registry Office under the old system can re-file their trademarks starting from October 1, 2020, for the trademarks to be recognized under the MTL2019. Owners of trademarks used in Myanmar can file their trademarks with evidence of use during the soft opening. The end of the soft opening is not stated in the Order.
2. The priority registration date of the registered trademark under the old system and the priority right of the used trademark will be recognized. The application re-filing / filing date will the same as the effective date of the MTL2019 to be announced later.
3. The re-filing / filing can be made online by a non-Myanmar owner through a recognised Myanmar law firm as the local representative. A Myanmar owner can file the application in person or online without a local representative.
4. The major re-filing / filing requirements are:
- a specimen of the mark,
- a list of goods/services with the Nice classification (they must be the same as those under the DTO),
- a copy of the registered DTO,
- a copy of the published cautionary notice,
- evidence of use (such as copies of invoices/tax invoices and receipts for sales of goods/services) and evidence of advertisement for the used mark,
- evidence of trademark assignment or owner name change if the name of the owner under the DTO, and
- if the name under the application is not the same, a notarized power of attorney in case the owner is not a citizen of Myanmar.
The MOC will announce the official fee rates under a separate order before the effective date of the TML2019. This Order is not for filing a new non-registered / non-used trademark.
Registration of trademarks with the Registry Office under the old law can still be filed after October 1, 2020.
Source: LawPlus Myanmar Ltd.
Sep 10, 2020 (Newsletter Issue 14/20)Guidance on International Registrations Designating EUThe UK Intellectual Property Office (IPO) provides guidance on how international registrations designating the European Union will be protected in the United Kingdom after the end of the transition period.
- Comparable trademarks (IR)
IPO informs that on January 1, 2021, protected international registrations designating the EU will no longer be valid in the UK. On this day, these rights will be immediately and automatically replaced by UK rights at no costs. IPO will create comparable trademarks (IR), which will be recorded on the UK register.
Each new UK right will be treated as if applied for and registered under UK law, and may be challenged, assigned, licensed or renewed separately from the original international registration.
The filing and registration date the comparable trademark (IR) will correspond to the date of the international registration. This date will also apply for the purposes of future UK renewal.
- Effect of international (EU) subsequent designations
Holders who have designated the EU more than once in their international registration (IR) will receive comparable trademarks (IR) for each designation that has been protected in the EU. Where multiple comparable trademarks are created from a single international registration, each right will be independent.
In all cases, the filing and registration date accorded to the comparable trademark (IR) will correspond to the date on which protection in the EU was conferred.
Where an EU designation was obtained as part of an application for an international registration, the filing and registration date of the resulting comparable trademark (IR) will correspond to the date of the international registration.
However, where EU protection was obtained as a result of a subsequent designation, the relevant date of the resulting comparable trademark (IR) will be the date on which your request for subsequent designation was recorded in the international register.
In all cases, the date of completion of the registration procedure recorded against your comparable trademark (IR) will be the publication date of the EUIPO bulletin confirming that EU protection was not refused.
- Renewals and restoration
For future renewals, comparable trademarks (IR) that have been created from a protected EU designation filed as part of an international application will inherit the existing renewal date of the corresponding international registration.
Where created from an EU subsequent designation, the comparable mark will adopt the date of that subsequent designation for the purpose of future renewal.
The UK renewal date for comparable trademarks (IR) that correspond to an EU subsequent designation will be different from that recorded against the corresponding international registration.
IPO provides further information on numbering of comparable trade mark, pending applications and much more hereSource: www.gov.uk Aug 06, 2020 (Newsletter Issue 13/20)IP Legislation Amended / New Official Opposition ProcedureOn July 21, 2020, the Ukrainian parliament adopted several bills, e.g. Bill No. 2258, concerning the protection of intellectual property rights. The amendments are intended to bring Ukrainian legislation on intellectual property in line with the norms established in the European Union. It is expected that the changes will enter into force before September 1, 2020, once the laws are signed by the President of Ukraine and officially published.
The amendments introduce a new official opposition procedure for trademarks, where opposition can be filed within 3 months from the publication date of the trademark application. Under the old system, the opposition had to be filed at least 5 days before the decision on the application was taken.
Further changes are the following:
- Applications for trademark registration can now be submitted electronically.
- The grounds for refusing to register new trademarks and invalidating existing trademarks have been modified.
- Registration of collective trademarks has been introduced.
- The procedure for granting legal protection to international trademark registrations (under the Madrid system) has been amended.
- The sanctions for infringing on trademark rights are now stronger.
For further information, please click here and here
Source: www.iportal.rada.gov.ua; www.sojuzpatent.com Aug 06, 2020 (Newsletter Issue 13/20)
New Provisions Expand Use of Electronic Technologies
The State Duma of Russia adopted a law amending Part IV of the Civil Code of the Russian Federation. The new provisions expand the use of electronic technologies in the registration of IP rights. On July 20, 2020, federal law No. 217-ФЗ was signed by the Russian president, and it will take effect on January 21, 2021.
After the federal law “On Amendments to Part Four of the Civil Code of the Russian Federation” (dated July 20, 2020, No. 217-FZ) takes effect, documents of title (except for patents for secret inventions) will be issued electronically. Applicants can still choose to receive documents of title on paper.
Also, applicants will be able to attach 3D models of intellectual property objects (inventions, utility models, industrial designs, and trademarks) to their electronic applications. The 3D models will not be published. The format requirements for 3D models will be established by the Russian Ministry for Economic Development, which regulates Rospatent’s public services.
Source: www.sojuzpatent.com
Aug 06, 2020 (Newsletter Issue 13/20)New Civil Code to Help Protect IPOn May 28, 2020, the Third Session of the 13th National People’s Congress (NPC) voted and passed the “Civil Code of the People’s Republic of China”. This law will come into effect on January 1, 2021. The new code is a codification of civil statutes and comprises 1,260 articles, more than 50 of them related to intellectual property.
The IP spectrum includes copyright works, patented inventions, utility models and industrial designs as well as trademarks, geographical indications, trade secrets, integrated circuit designs, and new plant varieties.
Targeting severe IP infringements is included in Article 1185 and aligns with the newly amended trademark law that provides for increased punitive damages. Article 63 of the trademark law, as amended in November 2019, increased punitive damages from up to treble to up to quintuple assessed damages when infringement is committed in bad faith and the circumstance is serious.
For further information, please click hereSource: www.chinaiplawupdate.com Aug 06, 2020 (Newsletter Issue 13/20)
E-Filling at OSIM Updated
The State Office for Inventions and Trademarks of Romania (OSIM) has successfully updated its trademark e-filing with the support of European Cooperation at the EUIPO.
The system is now fully compliant with the new Romanian law on trademarks and includes a new e-signature capability. Trademark e-filing, design e-filing and e-services at OSIM have also been aligned with the provisions of the General Data Protection Regulation.
Source: euipo.europa.eu
Aug 06, 2020 (Newsletter Issue 13/20)
Harmonised Database of Goods and Services Adopted
As of 13 July 2020, the National Intellectual Property Center of Georgia (Sakpatenti) has decided to use the list of terms from the harmonised database of goods and services (HDB) in TMclass.
Georgian speaking users can now search and select almost 60 000 goods and services in their own language for their trademark applications.
Source: www.euipo.europa.eu
Aug 06, 2020 (Newsletter Issue 13/20)New Trademark Law ImplementedThe new Trademark Law 4679/2020 entered into force in Greece on March 20, 2020. It implements the Directive (EU) 2015/2436 to approximate the laws of the member states relating to trademarks and the Directive 2004/48/EC on the enforcement of intellectual property rights.
Certain provisions are retroactive to January 14, 2019. The new law consists of 90 articles and replaces the previous Trademark Law 4072/2012. Although Directive 2004/48/EC had already been implemented in the previous Trademark Law 4072/2012, the new law revises certain aspects of the trademark enforcement system.
Important changes are the following:
- No graphical representation requirement for trademarks anymore
- New types of non-traditional trademarks such as 3D, holograms, and sounds can be registered
- Certification marks are now available
- Relative grounds for refusal are no longer examined ex-officio
- Civil courts’ competence in trademark invalidity proceedings
- Invalidity counterclaims in infringement proceedings before the civil courts
- Non-use as defense in infringement proceedings
- Defenses in preliminary injunction proceedings
- Remedies for infringement
- Introduction of voluntary mediation in proceedings
For further information, please click here and hereSource: www.inta.org; www.prentoulis.gr Aug 01, 2020
First Greek Authenticity Certified in European Cooperation Project
On July 30, 2020, the Municipality of Thessaloniki (Greece) became the first certified ‘Authenticity’ under the framework of the European Cooperation Project (ECP8) ‘European Network of Authenticities’.
Following a Memorandum of Understanding signed between the Hellenic Industrial Property Organisation (OBI) and the Municipality of Thessaloniki, in cooperation with the Metropolitan Area of Thessaloniki, the Chamber of Tradesmen, the Economic chamber of Thessaloniki and the Chamber of Small and Medium-Sized Enterprises of Thessaloniki, a series of IP-related awareness-raising activities will take place locally over the next two years in the newly certified Authenticity.
This European Cooperation Project aims to raise awareness of both the value of IP, and the damage caused by counterfeiting in European cities among local policymakers, businesses and, ultimately, the European public.
Source: www.euipo.europa.eu
Jul 23, 2020 (Newsletter Issue 12/20)
Law on Geographical Indications in Force Soon
The Law on Geographical Indications, which was adopted on July 26, 2019, will enter into force on July 27, 2020 in Russia. The provision regarding liability for illegal use of a Geographical Indication (GI) symbol alongside an unregistered GI will come into effect on July 27, 2024.
It is already possible to register geographically related signs and names in Russia as appellations of origin which will continue to exist. Introducing GI protection is expected to make obtaining geographically related signs simpler and faster for both foreign and domestic producers.
A foreign applicant can successfully obtain GI protection in Russia if the GI is protected in the applicant’s own country and if it meets Russian legislative requirements in this field.
A registered GI will be valid for 10 years from the filing date and can be extended for an unlimited number of additional 10-year periods provided that, upon renewal, Russian rights holders submit a document confirming that they still manufacture the product, or, in the case of foreign rights holders, that they still have GI protection in their own country.
Source: www.petosevic.com
Jul 23, 2020 (Newsletter Issue 12/20)National Plan to Combat IP Infringement ReleasedOn June 5, 2020, the State Administration for Market Regulation (SAMR), which regulates market competition, monopolies, intellectual property, and drug safety, released a national plan to combat intellectual property infringement. The plan is officially entitled “Key Points of the National Work to Crack Down on Intellectual Property Infringement and the Production and Sale of Counterfeit and Inferior Commodities in 2020.” The plan lists 35 points covering trademark, patent, copyright, and trade secret protection. Special emphasis is placed on protecting the intellectual property of foreign-invested enterprises.
The plan specifies the following measures:
1) Deepen governance and product supervision in key areas
2) Strengthen Intellectual Property Protection
3) Severely punish infringement, counterfeiting and other IP crimes
4) Promote the Promulgation of IP Laws & Regulations
5) Promote ‘Social Co-Governance”
6) Deepen foreign exchanges and cooperation
7) Promoting business capacity building
For further information, please click hereSource: www.natlawreview.com; www.slwip.com; www.cnipa.gov.cn Jul 23, 2020 (Newsletter Issue 12/20)
Preparation for Accession to Madrid Protocol
On June 19, 2020, Hong Kong gazetted the Trade Marks (Amendment) Ordinance, paving the way for the application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in Hong Kong. This follows on from the outcome of a public consultation conducted back in 2014.
Following the enactment of the Ordinance, the Hong Kong government will press ahead with relevant preparatory work for the implementation of the Protocol, including preparing subsidiary legislation to provide for the relevant procedural details, setting up a dedicated information technology system and obtaining the agreement of the central government to seek application of the Protocol to Hong Kong. Subject to the progress of this preparatory work, the local government aims to implement the Protocol in Hong Kong as soon as possible.
Source: www.nortonrosefulbright.com
Jul 23, 2020 (Newsletter Issue 12/20)Becoming Depositing and Accessing Office for WIPO DASThe Austrian Patent Office (APO) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the Digital Access Service for Priority Documents (DAS) that it would commence operation as a depositing and accessing office with effect from October 1, 2020.
Technical and operational options adopted by APO are:
- APO as a depositing Office will deposit certified copies of patent, utility model, industrial design and trademark applications as priority documents, including PCT applications filed with the Office on and after October 1, 2020, which the applicant specifically requests be made available to the service
- APO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by October 1, 2020.
- All documents and information will be exchanged in black and white or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by the depositing
More information can be seen hereSource: www.wipo.int Jul 23, 2020 (Newsletter Issue 12/20)
Official Fees Reduced Temporarily
On May 26, 2020, in response to the COVID-19 pandemic, Vietnam’s Ministry of Finance issued Circular No. 45/2020/TT-BTC on the reduction of fees for registration of foreign QR codes as well as certain industrial property fees. Accordingly, the industrial property fees listed in Section A of the schedule promulgated with Circular No. 263/2016/TT-BTC of the Ministry of Financeare temporarily reduced by 50% from May 26 until the end of 2020, returning to the old levels on January 1, 2021.
Specifically, the following fees are subject to the 50% reduction:
- Filing fees for applications (including divisional applications and converted applications);
- Fees for requesting an extension of time to respond to the IP Office’s notifications;
- Fees for issuance of protection titles;
- Fees for issuance of certificates of recordal of IP license agreements;
- Annuities for patents for inventions/utility solutions and renewal fees for trademark registration certificates and patents for industrial designs;
- Fees for late payment of annuities/late filing for renewal;
- Fees for requests for invalidation/termination of protection titles;
- Fees for issuance of IP agent practicing certificates, publication and recordal into National Registry.
The range of fee savings is about USD 2 to USD 9.
Source: www.tilleke.com
Jul 23, 2020 (Newsletter Issue 12/20)New Trademark Law in ForceAs of July 13, 2020, a new Trademark Law entered into force, implementing the EU Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015. For the time being, the implementing regulations of the Trademark Law are still pending. They are expected to be published by mid-September 2020.
The main changes concern the registration proceedings, allowing for a clearer extent of protection in respect of the goods and services as well as changes in the registration and opposition proceedings, streamlining the procedure and granting a precise registration date for the trademark.
Some of the most important changes include:
- Elimination of graphical representation requirement
- Possibility to register non-traditional signs such as sounds, holograms, multimedia marks
- Adoption of the literal interpretation of class headings when interpreting the scope of protection
- Option to clarify the scope of protection for existing trademark registrations covering class headings until September 30, 2020.
- Changes to opposition proceedings by introducing a number of new procedural steps, amending the date from which the opposition term is calculated and implementing a cooling-off period
- Elimination of possibility to contest a trademark application directly before the Appeals Committee
- Extending and clarifying absolute grounds for refusal and introducing additional absolute grounds for refusal.
- Introduction of administrative invalidity and revocation proceedings at the Romanian PTO starting from January 14, 2023
For further information, please see the article of our Country Index Partner Ratza & Ratza here
Source: Ratza & Ratza, Romania Jul 09, 2020 (Newsletter Issue 11/20)Trademark Law AmendedIn Cyprus a new Trademarks Law has been enacted which amends the Trademarks Law (Cap.268). The new Law implements the European Trademarks Directive (Directive (EU) 2015/2436) and was published in the Official Gazette on June 12, 2020. The supplementary Trademarks Regulations were published in the Official Journal on June 16, 2020.
Some of the important changes include:
- Introduction of multi class applications
- New types of trademarks such as movement, holographic, sound, position etc.
- No requirement for power of attorney
- Possibility of dividing a registered trademark
- Additional absolute and relative grounds of refusal
- Extension of opposition period to 3 months
- Cooling off period of 2 months during opposition proceedings
- Applicant's right to request proof of actual use of earlier mark from opponent in opposition proceedings
- Introduction of non-use as defence to opposition and cancellation
- Extension of duration trademark to 10 years
- Replacement of submission of affidavit (under oath) with submission of declaration
- Online publication of trademark applications
For further information, please see the article of our Country Index Partner Koushos Korfiotis Papacharalambous here
Source: Koushos Korfiotis Papacharalambous, Cyprus Jul 09, 2020 (Newsletter Issue 11/20)TBMP 2020 Update AvailableThe United States Patent and Trademark Office (USPTO) informs that the June 2020 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage under „Policies & procedures” here.
The revision describes current practice and procedure under the applicable authority and relevant case law reported between March 1, 2019, and February 29, 2020. Source: www.uspto.gov Jul 09, 2020 (Newsletter Issue 11/20)Criteria on Determining Trademark Infringement IssuedOn June 15, 2020, the China National Intellectual Property Administration (CNIPA) issued the Judging Criteria for Trademark Infringement (Criteria) to further implement the decisions and arrangements of the State Council on strengthening intellectual property protection, reinforce the PRC Trademark Law and the Implementation Regulations of the Trademark Law related enforcement through guidance, and unify the standards of law enforcement for the local authorities and People’s Courts. The Criteria took effect immediately.
The purpose of issuing the Criteria is to provide guidelines for the enforcement of trademark rights, to harmonise enforcement practice and to improve the protection of trademark exclusive rights.
Key aspects of the Criteria are as follows:
- Use of trademarks
- Identical and similar goods and services
- Identical and similar trademarks
- Likelihood of confusion
- Constitution of trademark infringement
- Seller’s liability exemption
- Other noticeable provisions
For further information, please click hereSource: www.cnipa.gov.cn, www.cms.law Jul 09, 2020 (Newsletter Issue 11/20)New Online Services ImplementedThe Dominican Republic Intellectual property Office (ONAPI) has implemented new online services through its virtual platform which includes the following:
- Trademark renewals
- Multi-class trademark registration application
- Change of trademark agent
- Unification of all payments under one single payment
To access these new services, users will need to use the Online IP Registry Application System (E-SERPI).Source: www.onapi.gob.do Jul 09, 2020 (Newsletter Issue 11/20)Declarations on Hague Agreement of Industrial Designs on Protection TermOn May 30, 2020, WIPO received from the Ministry for Development of Economy, Trade and Agriculture of Ukraine, the declarations as required under Article 17(3)(c) of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, and Rule 36(2) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, specifying that the maximum duration of protection provided for by the legislation of Ukraine in respect of industrial designs is 25 years.
More information can be seen hereSource: www.wipo.int Jul 09, 2020 (Newsletter Issue 11/20)New Trademarks Law Implemented On June 25, 2020, the Trade Marks Act No. 8 of 2015 came into effect in Trinidad and Tobago repealing the Trade Marks Act, Chap. 82:81. The new Act was originally passed in June 2015, but its implementation was delayed pending the finalisation of the Trade Marks Regulations 2020.
Some of the important changes include:
- Online filing of trademark applications
- Use of latest Nice Classification (11th edition)
- Unified Register, instead of Part A and Part B Register
- Broader definition of marks for registering non-conventional marks
- Enhance protection for “well-known” marks
- Introduction of protection for collective marks
- Revised rules on ground of revocation on grounds of non-use
For further information, please see the article of our Country Index Partner HSM IP Ltd. here
Source: HSM IP Ltd., Cayman Islands Jun 25, 2020 (Newsletter Issue 10/20)COVID-19 Prioritized Examination Program IntroducedOn June 12, 2020, the United States Patent and Trademark Office (USPTO) announced a new COVID-19 prioritized examination program for certain trademark and service mark applications.
Under this new program, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions.
To qualify for the new program, the application must cover a product that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19 or a medical or medical research service for the prevention and/or treatment of COVID-19.
For more information, please click hereSource: www.uspto.gov Jun 25, 2020 (Newsletter Issue 10/20)
Implementation of IP User Repository Completed
The Slovenian Intellectual Property Office (SIPO) is the first pilot office to complete the implementation of the European Cooperation Project ‘ECP3 IP User Repository (IPUR)’.
IPUR is a support tool developed in the framework of the EUIPO’s European Cooperation activities. It aims to help IP offices avoid duplication of records of personal data (applicants and representatives).
The tool uses artificial intelligence to identify potential personal records that might belong to the same entity, given some preliminary rules defined by the office. Based on these rules, the tool proposes these matches as clusters for the office to review. The main outcome is a clean database of users without duplicates or incomplete personal data.
From the initial 144,000 records analysed by the Slovenian office, 136,000 duplicates were identified which resulted in 21,000 clusters and 7,182 unique records.
Source: www.euipo.europa.eu
Jun 25, 2020 (Newsletter Issue 10/20)Request of New Registration of Authorized Designations of OriginOn June 3, 2020, the Ministry of Foreign Affairs of Uruguay informed of the opening of a registration of prior users in the framework of the Association Agreement between MERCOSUR and the European Union, and in relation to the following Geographical Indications: Parmesano, Parmesão, Reggianito, Fontina, Gruyère, Gruyere, Gruyerito, Gruyer, Manchego Cheese, Grana, Gorgonzola, Ginebra, Genebra, Steinhäger, Grappamiel, Grapamiel.
The regulations apply to prior uses in Uruguay as well as in other Mercosur countries (Brazil, Paraguay and Argentina). Thus, the Ministry requires any individual or legal entity who is the user of any of the indicated designations to request their registration in the list of “prior users” by sending an affidavit in which confirm they comply with the requested requirements.
The provision states that hereinafter the continuation of the use of such Designations of Origin will only be allowed for those who are registered in the list of authorized prior users, which will be made by the applicable authority for this purpose. Thus, those who are not registered must hereinafter refrain from using the indicated designations.
The period for requesting the registration ends on June 30, 2020.
To access the official communication, please click hereSource: www.clarkemodet.com Jun 25, 2020 (Newsletter Issue 10/20)Administrative Measures for Use of Special Marks of GIsThe China National Intellectual Property Administration ("CNIPA") has recently enacted and issued the Administrative Measures for Use of Special Marks of Geographical Indications (for Trial Implementation) (the "Measures") which takes effect immediately from the date of issuance.
According to the Measures, four types of subjects, including "producers that have been approved, as stated in public announcements, to use the special marks of geographical indications on their products", are the legal users of special marks of geographical indications.
These legal users shall observe the principle of good faith, fulfil three obligations including "organizing the production of geographical indication products pursuant to relevant standards, management practices and administrative rules for such use".
The Measures prescribe that where a legal user of the special mark of a geographical indication fails to organize production activities in accordance with the corresponding standards, management practices or relevant administrative rules for use, or has not used, within two years, the special mark on the protected geographical indication products, the intellectual property authority shall disqualify it from using the special mark of the geographical indication concerned. In addition, the Measures mandate a transition period till December 31, 2020 for the use of the original special marks of geographical indications, stating that products bearing the original marks that are produced before December 31, 2020 may continue to be circulated in the market.
For more information, please click hereSource: www.watson-band.com Jun 25, 2020 (Newsletter Issue 10/20)
Accession to Geneva Act of the Hague Agreement
On June 10, 2020, the Director General of WIPO presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Suriname of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The Act will enter into force, with respect to the Republic of Suriname, on September 10, 2020.
Jun 25, 2020 (Newsletter Issue 10/20)New Appellation of OriginOn May 5, 2020, the Brazilian PTO published in the Official Bulletin (RPI) nº 2574 the grant of the geographical indication (GI) “Campanha Gaúcha” in the type of appellation of origin for fine white, rosé wines, red and sparkling wines. This is the seventh GI in the state of Rio Grande do Sul for wine segment.
From now on, all wine producers who are within the demarcated region and who follow the rules contained in the regulations for use – called the Technical Specifications Booklet – will be able to use GIs in their products.
For more information, please click hereSource: www.moellerip.com Jun 25, 2020 (Newsletter Issue 10/20)Expired Marks May be RecoveredOn June 15, 2020, the Registrar of the Kenya Industrial Property Institute (KIPI) published a public notice in a Special Industrial Property Journal notifying the public that the proprietors of the trademarks listed in the issue of the Journal had been duly notified and that they had not applied for renewal of their respective trademarks.
Furthermore, the Registrar informs that, in accordance with the provisions of Rules 67 and 68 of the Trade Mark Rules, trademarks which have been removed from the Trade Mark Register may be restored by the proprietor who files an application for renewal of the trademark against payment of the prescribed renewal fee together with the additionally prescribed restoration fee.
The trademark will then be restored in the Register upon the Registrar being satisfied that it is just to do so and upon imposing such conditions as the Registrar considers appropriate.
For more information, please click hereSource: www.kipi.go.ke Jun 25, 2020 (Newsletter Issue 10/20)
E-Filing Services Expanded
The Department of Intellectual Property Rights (DIP) of Cambodia has implemented new functions in its e-filing system to allow online submission of most post-registration matters.
In addition to the e-filing of trademark applications, the system can now handle renewals, affidavits of use, responses to refusals, and changes of agent. Other matters, including oppositions, invalidations, changes of address and search requests still need to be submitted in paper form with the DIP. The e-filing system requires an account at the DIP and a local bank account. It is only open to domestic applicants and registered trademark agents.
Source: www.abacus-ip.com
Jun 11, 2020 (Newsletter Issue 9/20)
E-Filings for Trademarks Introduced
The National Direction of Intellectual Property (DINAPI) of Paraguay has introduced a new e-filing system for trademark registrations and renewals, which has been implemented by Decree since mid-April 2020.
The e-filing system allows trademark agents to submit registrations and renewals with their digital signature while paying the fees for trademark applications. Subsequently, the filing confirmations are received by e-mail.
The Decree introducing the e-filing system also provides for a 30-day phase-out period for applications in paper form. After this period, all trademark registrations and renewal requests in Paraguay will be filed electronically.
The Office is working to optimize the e-filing system and add more tools so that in the future all applications can be filed electronically.
Source: www.berke.com.py
Jun 11, 2020 (Newsletter Issue 9/20)New Trademarks Examination Guide on Cheeses/Processed MeatsThe USPTO has issued a new examination guide titled Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats. The guide sets out procedures for examining applications for cheeses and processed meats in which the mark includes geographic wording that does not indicate geographic origin, but otherwise may be a generic designation for such goods.
The guide can be found hereSource: www.uspto.gov Jun 11, 2020 (Newsletter Issue 9/20)
Relief for Trademark Fees/Deadlines on Case-by-Case Basis
The USPTO has waived certain fees under existing authority, through the March 16, 2020 Notice, and has extended certain Trademark and Trademark Trial and Appeal Board (TTAB) deadlines twice under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), through the March 31, 2020 Notice and the April 28, 2020 Notice. These extensions have expired on May 31, 2020.
The USPTO informed that some stakeholders will continue to require relief, particularly small businesses and individuals. Under the CARES Act authority and its existing authority in Trademark and TTAB matters, the USPTO will direct relief to those who need it on a case-by-case basis, as described below:
- Applicants who were unable to submit a timely response or fee in response to an Office communication should file a petition to revive the application. See 37 CFR §§ 2.6(a)(15), 2.66.
- Applicants who missed the 36-month statutory deadline for filing a Statement of Use, and therefore their application has been abandoned, should use the TEAS “Petition to the Director” form. See 37 CFR § 2.146.
- Registrants who missed a statutory deadline, resulting in a cancelled/expired registration, or who were unable to submit a timely response or fee in response to an Office communication regarding a registration, should use the TEAS “Petition to the Director” form. See 37 CFR § 2.146.
Source: www.uspto.gov
Jun 11, 2020 (Newsletter Issue 9/20)Register of Historical Trademarks of National InterestOn April 16, 2020, the Italian Intellectual Property Office (UIBM) has accepted applications for registered trademarks that may be included in a newly established register of historical trademarks of national interest. The new category was introduced last year in Italy by law decree number 34 of April 30, 2019 (converted with amendments into law decree number 58 of June 28, 2019).
The owner of the trademark or its exclusive licensee may submit the application to UIBM in electronic form.
Historical trademarks of national interest must be used in connection with the marketing of products or services specifically manufactured by or originating from an Italian "company of outstanding quality historically linked to the Italian territory" for at least 50 years and have been timely renewed. The status of historical trademark may also be granted to unregistered trademarks if they have been used without interruption for the same minimum period of 50 years, as evidenced by proof of such use.
For more information, please click hereSource: www.ip-coster.com Jun 11, 2020 (Newsletter Issue 9/20)Practice Paper on Examination of Figurative Marks PublishedThe National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a Practice Paper concerning the examination of absolute grounds for refusal as regards figurative trademarks with purely descriptive words/expressions.
The DNPI is the first Latin American IP office to analyse and find common ground with the criteria developed under the Common Communication on the Common Practice of Distinctiveness – Figurative marks containing descriptive/non-distinctive words, referred to as marcas mixtas (mixed marks) in Uruguayan terminology.
The Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jun 11, 2020 (Newsletter Issue 9/20)Several Practice Papers PublishedThe National Intellectual Property Center of Georgia (Sakpatenti) has published three Practice Papers: Distinctiveness - figurative marks containing descriptive/non-distinctive words, Scope of protection of black and white marks, and Likelihood of confusion (impact of non-distinctive/weak components) relative grounds of refusal.
Sakpatenti is the first non-EU IP office to find common grounds with the criteria listed under the Common Communication on the following three Common Practices:
- Distinctiveness - figurative marks containing descriptive/non-distinctive words (CP3);
- Scope of protection of black and white marks (CP4);
- Likelihood of confusion (impact of non-distinctive/weak components) relative grounds of refusal (CP5).
The practice papers have been made available to the public in Georgian and English. For more information and for access to the papers, please click hereSource: www.euipo.europa.eu Jun 11, 2020 (Newsletter Issue 9/20)Exchange of Priority Documents of Design ApplicationsThe Israel Patent Office (ILPO), Designs department, notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from July 1, 2020.
ILPO as a depositing Office will deposit certified copies of design applications as priority documents, filed at the Office on and after July 1, 2020, which the applicant specifically requests be made available to the service.
- ILPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by July 1, 2020.
- All documents and information will be exchanged in color and in PDF format through WIPO PCT-EDI;
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- Details on the Office’s participation in the service will be made available on the Office’s website.
For more information, please click hereSource: www.wipo.int Jun 11, 2020 (Newsletter Issue 9/20)NIPO as Depositing and Accessing Office of Exchange of Priority DocumentsThe Norwegian Industrial Property Office (NIPO) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from January 1, 2020.
- NIPO as a depositing Office will deposit certified copies of Patent, Trademark and National Industrial Design applications and PCT international applications filed with the office on and after January 1, 2018, where applicant specifically requests services to be available;
- NIPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by January 1, 2019.
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- For patent applications, all documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;
For more information, please click hereSource: www.wipo.int Jun 11, 2020 (Newsletter Issue 9/20)
Digitisation of Paper Books at IP Office
On June 3, 2020, the Greek Trademark Office (GGE) has successfully completed the digitisation of paper books. More than 1.3 million pages of 2,600 stored books have been digitised, which form 390,000 trademark dossiers.
The digitisation process in GGE has been carried out in scope of the ECP5 ‘Capture and Store Historical Files’ subproject, which aims at digitising paper files across the EU intellectual property offices to enable easy and rapid access to documentation and data related to trade mark and design dossiers.
Source: www.euipo.europa.eu
Jun 11, 2020 (Newsletter Issue 9/20)Drug Labeling IntroducedFrom July 1, 2020, all pharmaceutical products for medical use in Russia will have to be labelled in accordance with the federal information system for monitoring the circulation of pharmaceutical products. In order to meet the requirements, each pharmaceutical product will have a unique identifier on its packaging, a Data Matrix code, containing information such as the product’s serial number, expiration date, consignment number and manufacturer’s name, thus enabling the monitoring of each product’s circulation from the manufacturer to the end user.
The drug monitoring system was introduced by the Federal Law No. 425-FZ of December 28, 2017, which brought changes to the Federal Law ‘On Circulation of Medicines’. It was first intended to enter into force on January 1, 2020, but the entry into force was postponed until July 1, 2020 by further amendments to the Federal Law ‘On Circulation of Medicines’ introduced on December 27, 2019.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)
Locarno Agreement Joined
Singapore has become the first country in ASEAN to join the Locarno Agreement, which has entered into force on March 19, 2020.
The Locarno Agreement is an international standardised classification system for industrial designs.
Source: www.bakermckenzie.com
May 28, 2020 (Newsletter Issue 8/20)
Accession to Banjul Protocol on Marks
On May 15, 2020, the Government of the Republic of Mozambique deposited its Instrument of Accession to the Banjul Protocol on Marks with the Director General of ARIPO. In accordance with the provisions of the Protocol, the latter will enter into force, with respect to the Republic Mozambique, on August 15, 2020.
Pursuant to the above, with effect from August 15, 2020, Mozambique will be eligible for designation.
It is worth noting that Mozambique had already enacted provisions in its Intellectual Property Code (Decree Nr. 47/2015 of 31 December 2015) that would allow the immediate implementation of the Banjul Protocol if it became party to the Protocol (domestication of the Protocol).
The accession to the Banjul Protocol by the Republic of Mozambique brings the number of Member States party to the Protocol to Eleven.
Source: www.aripo.org
May 28, 2020 (Newsletter Issue 8/20)Specialised IP Courts IntroducedThe new law of February 13, 2020, on the amendment of the Act of 17 November 1964 - Code of Civil Procedure and certain other acts (“Act”) was signed by the Polish President on February 19, 2020. The Act provides specialised intellectual property courts (IP Courts) which will be separated units of the Polish common courts. The law will enter into force on July 1, 2020.
The new IP Courts will be competent in all IP matters, including cases concerning trademarks of the European Union and Community Designs. It covers not only cases concerning protection of copyrights and industrial property rights, but also, among others, matters concerning combating and preventing unfair competition and protection of personal rights in certain cases, e.g. relating to advertising or promotion of goods and services, or scientific and inventive activities.
Four courts have been appointed to examine intellectual property matters, namely the District Courts in Warsaw, Gdansk, Poznan, and Lublin, and two Appeal Courts.
For more information, please click hereSource: www.cms-lawnow.com May 28, 2020 (Newsletter Issue 8/20)New Web Portal LaunchedOn May 15, 2020, the INPI Brazil has launched a new user-friendly website. Currently the portal is in beta version and will undergo improvements until its final version.
This new portal is part of both the Digital Government Strategy 2020-2022 and the IP Digital Plan.
For more information, please click hereSource: www.gov.br May 28, 2020 (Newsletter Issue 8/20)VAT Rate Increased SoonThe Saudi Minister of Finance announced an increase of the value added tax (VAT) rate from 5% to 15% as of July 1, 2020.
The VAT was introduced in January 2018 and applies to goods and services, with some limited exceptions on basic food items, healthcare, and education.
Source: JAH & Co. IP, Qatar May 28, 2020 (Newsletter Issue 8/20)Increase of Official Fees PostponedThe Registrar General’s Department informs in an official circular that the 20% increase in official fees for trademarks and patents, which should have entered into force on May 19, 2020, has been put on hold due to the devastating effects of the COVID-19 situation. A new date for the fee increase will be given at the appropriate time.
Source: JAH & Co. IP, Qatar May 28, 2020 (Newsletter Issue 8/20)Proposed Changes to Trademark LawThe Ministry of Justice and Public Security (the “Ministry”) has issued a proposition to the Norwegian Parliament (Prop. 43 LS (2019-2020) for amendments to the Norwegian Trademark Act, the Norwegian Customs Act, the Norwegian Mortgage Act and legislation on other forms of intellectual property. The proposed amendments aim to harmonise Norwegian legislation with the Directive (EU) 2015/2436 (the “Trademark Directive”), which was incorporated into the EEA Agreement on 7 February 2020.
Some of the key proposed amendments are the following:
- Elimination of the graphical representation requirement, where after the requirement is that the trademark must be reproducible in the trademark register in a clear and unambiguous manner.
- The non-exhaustive list of signs that can constitute a trademark is extended to include further examples, such as colours and sounds.
- The list of absolute grounds for refusal in Section 2, second paragraph, is proposed to be expanded. Signs that consist exclusively of a shape or another characteristic which either results from the nature of the goods themselves, is necessary to obtain a technical result or which gives a substantial value to the goods, may not obtain protection as a trademark, if the proposed amendment is implemented.
- Introduction as a new absolute ground for refusal or invalidity in Section 15 that the trademark application is submitted in bad faith.
- The relevant point in time for assessment of distinctiveness is shifted. Consequently, signs that only acquire distinctiveness through use after the application date but before the Registration date shall no longer be refused.
- Non-use as a defence in opposition and infringement proceedings: Pursuant to the suggested provision, the proprietor of an earlier trademark must upon request from the applicant of the later trademark, prove that the earlier trademark has been put to genuine use in the preceding five-year period. The same applies in relation to claims for injunction against infringers, cf. the proposed Section 57 second paragraph.
- Security in trademark rights: The amendment makes it possible to separate security rights in trademarks from the rest of the business assets, compared to a fee covering the entire business assets of the company.
For more information, please click hereSource: www.bahr.no May 28, 2020 (Newsletter Issue 8/20)
New Online Services
Since May 12, 2020, the Benelux Office for Intellectual Property (BOIP) provides additional online services: Change of Representative and Transfer of Rights for trademarks and for designs, which will help modernise IP-related operations in the Benelux. These new digital services complement BOIP’s existing services (Change of Name, Change of Address, Change of Name and Address, Renewal Trade Mark, Renewal Design, Opposition and e-Filing Trade Mark/Design).
The new BOIP services are the result of the work carried out by the EUIPO and its partners under the European Cooperation Projects (ECP1).
Source: www.euipo.europa.eu
May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com May 14, 2020 (Newsletter Issue 7/20)
Introduction of Multi-Class Filings Postponed
On March 3, 2020, the National Intellectual Property Institute (INPI) announced that due to issues related to the computerized processing system, multi-class filings, trademark co-ownership and divisions of Brazilian applications will not come into force on March 9, 2020.
As soon as a new date is established for the start of services, a notice will be published in the Revista da Imóvel Industrial (RPI) and in the INPI Portal.
Source: www.inpi.gov.br
May 14, 2020 (Newsletter Issue 7/20)
Electronic Procedures by IP Office Allowed
On April 24, 2020, the Venezuelan Registry Office (SAPI) made the following decisions in an Official Notice:
a) Starting on April 27, 2020, and until the Government lifts the obligatory quarantine generated by the COVID-19, only the following procedures can be submitted electronically: Applications for registration of distinctive signs, patent applications, assignments, mergers, name and address changes.
All essential documentation that must be filed at the time of the applications must also be submitted in electronic format, complying with the formalities of law. Such documentation includes apostilles, certifications and authentications, with the commitment to present the originals documentation once the obligatory quarantine has been lifted.
b) All terms of the official bulletins that were valid on the date the obligatory quarantine was declared, remain suspended, and payments will only be accepted for publication orders in press and concessions that have been notified in said bulletins.
The Official Notice does not contain any reference to the submission of documents relating to cases prior to the obligatory quarantine; therefore these should only be presented when compulsory quarantine is lifted.
Source: www.ecv.com.ve
May 14, 2020 (Newsletter Issue 7/20)Administrative Invalidity and Revocation Proceedings Possible NowOn April 29, 2020, the German Patent and Trade Mark Office (DPMA) informs that the second part of the Trade Mark Law Modernisation Act entered into force. Invalidity and revocation proceedings are now possible at the DPMA which previously had to be handled exclusively by the courts.
As from May 1, 2020, holders of the earlier rights referred to in sections 9 to 13 of the Trade Mark Act may also have invalidity proceedings conducted directly at the DPMA. The application may also be based on several earlier rights (section 51 (1) of the Trade Mark Act). However, a declaration of invalidity on the basis of conflicting earlier rights is excluded in certain cases – for example, if the holder of the earlier rights has acquiesced in the use of the later trade mark or if he has not put to use his own trade mark (section 51 (2) and (4), sentence 1 no. 1 of the Trade Mark Act). If the proprietor of the challenged trademark objects to the application for a declaration of invalidity within a period of two months, invalidity proceedings will be conducted. If he does not object to the application, his trademark will be declared invalid and cancelled.
As from May 1, 2020, revocation proceedings, too, can be conducted fully at the DPMA. Upon request, registered trademarks will be revoked and cancelled if they have not been put to use within a period of five years, if they have become of such a nature as to deceive the public or if the proprietor no longer fulfils the requirements of section 7 of the Trade Mark Act. There are further grounds for revocation for collective marks and certification marks.
More information can be seen hereSource: www.dpma.de May 14, 2020 (Newsletter Issue 7/20)New Industrial Designs LawOn April 19, 2020, the State of Qatar released a Law No. 10 of 2020 for the Protection of Industrial Designs. This new law revoked the industrial design law of 2002.
At this stage, the new law still requires the issuance of an implementing decree which will provide the registration formalities and official fees to be applied for industrial designs protection.
Nevertheless, it is recommended to publish cautionary notices in local Qatari newspapers at regular intervals to avoid any future infringements conflicts.
Source: JAH & Co. IP, Qatar and www.dc-ls.com Apr 30, 2020 (Newsletter Issue 6/20)Practice Paper on Graphic Representation of Designs PublishedThe National Intellectual Property Center of Georgia (Sakpatenti) has published a practice paper concerning graphic representation of designs.
Sakpatenti is the first non-EU intellectual property office to find common grounds with the criteria listed under the Common Communication on the Common Practice — Graphic Representation of Designs.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by Sakpatenti and the IP offices of the European Union Intellectual Property Network (EUIPN).
The publication of the practice paper seeks to increase transparency, legal certainty and predictability for the benefit of users and examiners of IP offices. It also aims to become a reference for all interested parties, covering a majority of cases.
The paper has been made publicly available in Georgian and English. Source: www.euipo.europa.eu Apr 30, 2020 (Newsletter Issue 6/20)
Accession to Hague Agreement on International Registration of Industrial Designs
On March 6, 2020, the Government of the United Mexican States deposited with WIPO its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force, with respect to the United Mexican States, on June 6, 2020.
Source: www.wipo.int
Apr 30, 2020 (Newsletter Issue 6/20)
E-filing and Back Office System Enhanced
On March 2, 2020, the Patent Office of the Republic of Latvia (Patentu valde) has enhanced its e-filing portal and back office system, allowing applicants to register various new types of trademarks, in accordance with the EU Trade Mark Directive.
There are now 11 types of trademarks that can be registered in the Latvian IP office, including non-traditional trademarks, such as holograms and multimedia marks.
Source: www.euipo.europa.eu
Apr 30, 2020 (Newsletter Issue 6/20)Official Trademark Fees ReducedPursuant to Cabinet Departmental Decision 20/2020 of March 31, 2020 concerning services provided by the Ministry of Economy, the United Arab Emirates has announced a range of discounts on existing fees for services.
The decision was published in the Official Gazette and entered into force on April 5, 2020. The decision is intended to support both domestic and foreign companies affected by the economic impact of the global Covid-19 pandemic.
The official fee for filing a trademark application is now AED 750 in one class instead of AED 1,000. The fee for publication in the Trademark Gazette after acceptance has been reduced from AED 1,000 to AED 750. The registration fee for one mark or a series of marks in one class is AED 5,000 instead of AED 6,700.
The detailed reduced fees can be accessed here as issued by the Cabinet.
Source: JAH & Co. IP, Qatar Apr 30, 2020 (Newsletter Issue 6/20)Registrations of Medical Goods MandatoryThe Intellectual Property issued a notice ordering pharmaceutical and medical devices to obtain legal protection of their rights by registration in order to prevent bad faith registration of such trademarks and possible infringement by third parties.
Previously, there was no need for manufacturers or exporters of such products to trademark their goods, and they only had to register their products with the Supreme Authority for Medicines and Medical Devices.
Source: JAH & Co. IP, Qatar Apr 30, 2020 (Newsletter Issue 6/20)Mobile-Filing of Trademark Application IntroducedKIPO has re-organised the “특허로” portal to start a mobile service for filing trademark applications. The portal is available on the Korean language Website www.patent.go.kr.
All customer services from filing a trademark application, receiving official notices, paying official fees, searching for the status of examination processing to issuing a certificate of registration are accessible via the newly organised portal using smartphones.Source: www.pkkim.com Apr 30, 2020 (Newsletter Issue 6/20)
Updated Taiwan-Japan Concordance of Similar Group Codes Released
In conjunction with the modification to the 11th Edition-Version 2020 of the Nice Classification made by WIPO, the Taiwan Trademark Office (TIPO) renewed the Taiwan-Japan Concordance List of Similar Group Codes corresponding to the Nice Classification, 11th edition, version 2020 (NCL11-2020), as a reference for Taiwanese and Japanese trademark registration applicants to utilize this list when searching for currently registered trademarks.
Source: www.tipo.gov.tw
Apr 30, 2020 (Newsletter Issue 6/20)Two New Online Services LaunchedThe National Institute of Industrial Property of Portugal (INPI) launched two new online services for filing international trademark applications and European patent applications.
In accordance with Law No. 4-A/2020, which authorises exceptional and temporary measures in response to the COVID-19 outbreak, and Decree-Law No. 16/2020, which provides that the actions of INPI are carried out exclusively via the internet, the two new online services are made available as of April 20, 2020.
All the necessary steps for each of the procedures will be explained on the service pages Filing an international trademark application and Filing a European patent application on the Justiça.gov.pt portal.
Further information can be found hereSource: www.justica.gov.pt Apr 30, 2020 (Newsletter Issue 6/20)Online Filing System IntroducedOn April 27, 2020, the Honduran Trademark & Patent Office has implemented an online system for trademark applications and renewals, which is working irrespective of the quarantine ordered.
Online applications can now be filed in the jurisdictions Honduras, Belize, Dominican Republic, Ecuador and Paraguay.
Online applications directives for patent filings are expected to follow shortly.
Source: Bufete Mejia & Asociados, Honduras Apr 30, 2020 (Newsletter Issue 6/20)New Requirements for Filing an Affidavit of UseIn order to simplify the process of filing an affidavit of use/non-use, the Department of Intellectual Property of Cambodia (DIP) has made some changes to the documents to be filed with the following details:
(i) Request for endorsement of an affidavit of use/non-use signed by the local agent.
(ii) Power of Attorney (“PoA”), in case new IP agent is appointed. However, if the trademark owners resort to their previouse IP agent to file an Affidavit of Use/Non-use, the earlier provided PoA is acceptable.
(iii) Copy/ies of Trademark Registration Certificate(s). Previously, the original Trademark Registration Certificate(s) is/are required to be submitted to the DIP.
(iv) Evidence of use/non-use
- If the mark is still in use, the box indicating "the mark is in use" must be checked. Furthermore, proof of use of the trademark in Cambodia must be provided, e.g. in the form of photos of the product, shops selling the product, invoices containing the name of the product
- If the mark is not used, the box must be filled in with the words "not used".
Source: KENFOX IP & Law Office, Vietnam Apr 30, 2020 (Newsletter Issue 6/20)
Trademark Law Amended
The Nicaraguan Trademark Law (Law No. 380) has been amended by Law No. 1024, which has now entered into force since the date of its publication on April 3, 2020. The relevant changes are comprised by the reduction of the terms, creation of new official fees and an increase in most of the existing official fees.
The following relevant aspects are:
- Official fees for all trademark matters must be now paid upfront along with the respective filing application. Prior to said amendments, the law allowed in some cases, such as new filings and renewals, to pay the official fees within the following two months from the filing date.
- The opposition term is reduced from the previous term of two (2) months to thirty (30) business days counted from the publication date. Furthermore, there is a new applicable official fee of USD 52 that must be submitted along with the opposition brief. Such term can be extended one time only for an additional fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of USD 20. The request of extension must be filed prior to the expiration of the opposition term.
- The term for the opposed party to file a response is also reduced from the previous term of two (2) months to thirty (30) business days counted from the date of the official notification of the opposition. Additionally, if the opposed party does not file a response, the application will be declared as abandoned and the file will be closed.
- The term to file evidence in opposition cases is reduced from thirty (30) business days to fifteen (15) business days, counted from the date of filing of the applicable matter (opposition or reply to opposition). Such term can be extended one time only for an additional fifteen (15) business days by filing an extension request and paying the respective extension official fee of USD 20. The request of extension must be filed prior to the expiration of the term to file evidence.
- The term to file a response to an objection raised by Trademark Office is reduced from the previous term of two (2) months to thirty (30) business days counted from the official notification of the objection. Furthermore, such term can be extended one time only for an additional fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of USD 20. The request of extension must be requested prior to the expiration of the term to file the response. Lastly, all evidence must be filed along with the reply to the objection.
- For urgent cases filed locally without a Power of Attorney through the rendering of a bond, the term to file the required Power of Attorney is also reduced from the previous term of two (2) months to thirty (30) business days counted from the date of the filing. Furthermore, such term can be extended one time only for fifteen (15) additional business days by filing an extension request and paying the respective extension official fee of USD 20. The request of extension must be filed prior to the expiration of the term.
- Most of the official fees increased and new fees were created. The official fee for filing a trademark application is now USD 135 for the first class and USD 65 for each additional class.
Source: www.guybendana.com.ni
Apr 02, 2020 (Newsletter Issue 5/20)No Original Handwritten Signature RequiredThe USPTO considers the effects of COVID-19 to be an "extraordinary situation" within the meaning of 37 CFR 1.183 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving the requirements of 37 CFR 1.4(e)(1) and (2) for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card. The Office notes that the requirements of 37 CFR 1.4(e)(1) and (2) are the only USPTO requirements for original handwritten, ink signatures, and the USPTO has no other requirements for original handwritten, ink signatures.
For more information, please click hereSource: www.uspto.gov Apr 02, 2020 (Newsletter Issue 5/20)Trademark Law ChangedThe Latvian Parliament adopted the new Trademark Law which replaced the existing Law on Trademarks and Geographical Indications on March 6, 2020. The new law contains revisions whose aim is to transfer the provisions of EU Trade Mark Directive 2015/2436.
Important changes are the following:
- No requirement of graphic mark representation.
- New trademark types such as multimedia, holographic and position marks
- Registration of a certification mark will be possible
- Proprietors of earlier rights will be entitled to prohibit use of identical or confusingly similar marks by other persons, whether in the course of trade or business.
- Trademark owners may be association of persons, natural persons and legal entities.
- Rightsholders will have exclusive rights to goods that are not released for free circulation.
- The new law in respect of trademarks will provide exclusive property rights, which allow trademarks to be expropriated, mortgaged or otherwise privately traded or enforced.
- The period for filing a reply to opposition in case of a contested international mark will be reduced from 3 to 2 months.
- Revocation and cancellation actions will be carried out by the Industrial Property Board of Appeal instead of the court.
- Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights will be reflected more thoroughly.
- Regulations on geographical indications will remain as a part of the Latvian Trademark Law.
- Clearer regulation on the right to prevent others from using a trademark in domain names.
For more information, please click hereSource: www.petpat.lv Apr 02, 2020 (Newsletter Issue 5/20)
Grace Period Extended
On January 31, 2020, the Rwanda Development Board issued a notice stipulating that according to Law no. 31/2009 the owners of trademarks filed before December 14, 2009 and who have not renewed its trademarks until December 14, 2019 will now be able to count on another 10 months of grace period. Therefore, the deadline to renew the trademarks filed before December 14, 2009 ends on October 13, 2020.
Source: www.inventa.com
Apr 02, 2020 (Newsletter Issue 5/20)Madrid e-Filing Service Available NowOn March 23, 2020, the State Agency on Intellectual Property of Moldova (AGEPI) is giving access to Madrid e-Filing service to trademark applicants via its website.
Brand owners will have the possibility to file international applications online and have direct access to Madrid Goods & Services Manager to check the classification of terms in their list of goods and services.
For more information, please check hereSource: www.wipo.int Apr 02, 2020 (Newsletter Issue 5/20)Fast Track Trademark Examination System SoonThe Taiwan Intellectual Property Office (IPO) introduces a new fast track trademark examination system to enable accelerated trademark examination process. Starting from May 1, 2020, any new trademark application which satisfies the following requirements shall automatically be subject to fast track examination. The examination period will be reduced by about 2 months and the fast track examination does not require a separate application or official fee.
Requirements for fast track examination:
1. Electronic filing shall be used;
2. Only traditional trademark shall be included;
3. All descriptions of goods or services shall be identical to the standard descriptions in the PO recommended terms of designated goods or services
4. Specific electronic methods of official fee payment shall be used;
5. If an attorney is appointed, the Power of Attorney shall be submitted together with the application
For more information, please under IP updates hereSource: www.wisdomlaw.com.tw Apr 02, 2020 (Newsletter Issue 5/20)
Registration of Geographical Indications Possible Now
The Ministry of Supply and Internal Trade of Egypt announced that it has started the registration of geographical indications for the first time in the country.
This decision comes to maximize the value of Egyptian products, whether agricultural or handicraft, and increase opportunities for exporting them abroad while ensuring the protection of their geographical origin.
Source: www.agip.com
Apr 02, 2020 (Newsletter Issue 5/20)
TM Opposition Applications before 2015
The General Department for Intellectual Property Protection in Yemen, affiliate of the Ministry of Industry and Trade, issued a new decision regarding the opposed trademark applications in Yemen.
The decision stipulates that all trademark applications that were opposed before 2015 will be considered as abandoned, due to the complexity of issuing their opposition decisions, since many files were misplaced during the civil unrest situation in Yemen back in 2011 and afterwards, and the relocation of the Ministry building.
Source: www.agip.com
Apr 02, 2020 (Newsletter Issue 5/20)Intellectual Property Act AmendedOn March 5, 2020, the Slovenian Parliament adopted amendments to the Industrial Property Act, transposing into the national legislation Directive (EU) 2015/2436 of the EU Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks. The amendments to the Slovenian IP Act came into force on March 29, 2020.
Important changes are the following:
- No graphical representation requirement for trademarks anymore
- New types of non-traditional trademarks such as holograms, movement marks and multimedia can be registered
- Re-definition of absolute grounds for refusal based on earlier Slovenian or EU-wide geographical indications, protected designations of origin, and traditional names for wines
- New absolute grounds for refusal for plant varieties and guaranteed traditional specialties
- Clearer definition of an earlier trademark that may be a basis for an opposition with respect to relative grounds for refusal
- Non-use defence now also to oppositions, non-use revocations, and infringement proceedings
- Non-exclusive licensees can now also seek protection against trademark infringements
- Exclusive licensee can now seek protection against infringement without trademark holder’s consent under certain conditions
- The licensee has now the right to join infringement proceedings as an interested party
The amendments apply to all pending procedures and trademarks as of March 29, 2020, with the exception of procedures where a legal remedy or a court proceeding were initiated before this date.
For further information, please check the article of Mr. Andrej Bukovnik from Bukovnik & Kulbaba IP Guardians hereSource: www.bk-ip.eu Apr 02, 2020 (Newsletter Issue 5/20)
Official IP Fees Changed Soon
The Icelandic Intellectual Property Office informs about the new Regulation no. 60/2020 on fees for patents, trademarks, designs, etc., which has been adopted by the Ministry of Industries and Innovation.
As of May 1, 2020, the official fee for filing a word mark will be ISK 33,100 for one class and ISK 7,100 for each additional class.
Source: www.gamli.els.is
Apr 02, 2020 (Newsletter Issue 5/20)Zanzibar’s IP Practice ChangedZanzibar’s Business and Property Registration Agency (BPRA) has introduced several amendments:
- An Online Registration System (ORS) has been put in place in Tanzania (Tanganyika). However, the systems are limited to Business Entities, Secured Transactions on Movable Property and Information Services.
- Authorized agent needs now to be an individual person within a law firm which is authorized to practice law in Zanzibar. It is relevant to note that powers of attorney must be prescribed in the name of said individual agent.
- Filing numbers are allocated from two to three working days after filing the application whether before this allocation was made at the moment of filing, namely when the filing receipt was issued. However, it should be noted that due to the existing backlog at the IPO it might delay this period of 2/3 working days for a couple of weeks.
- BPRA is now publishing its own trademark’s Journal. The publication shall be available for every month from 1st March, 2020 which will be available through the BPRA website www.bpra.go.tzSource: www.inventa.com; www.bpra.go.tz Apr 02, 2020 (Newsletter Issue 5/20)
Official Fees Increased
The Presidential Decree no. 62/20 authorising the increase of the official fees relating to the filing and prosecution of trademarks, patents, design and utility models in Angola.
However, the new fees were due to enter into force on March 20, 2020, but as a consequence of the state of emergency declared following the Covid-19 outbreak, the fees have been suspended until further instructions are issued by the Angolan Industrial Property Office.
One of the more noteworthy changes specifically relating to trademark applications are that all fees (including filing, 1st and 2nd publication fees, as well as grant fees for the issuance of registration certificates) are to be paid upfront.
At this stage it is unclear how this will effect current applications (i.e. those filed up to 19 March 2020), specifically regarding the issuance of registration certificates and the payment of grant fees.
Source: www.adams.africa; www.IPvocateAfrica.com
Mar 19, 2020 (Newsletter Issue 4/20)
Name of Patents Office Changed
On December 2, 2019, the Patents Office changed its name to the "Intellectual Property Office of Ireland” (IPOI).
Source: www.ipoi.gov.ie
Mar 19, 2020 (Newsletter Issue 4/20)Practice Paper on Distinctiveness on Figurative Marks PublishedThe National Institute of Standardization and Industrial Property of Tunisia (INNORPI) has published a practice paper concerning the examination of absolute grounds for refusal as regards figurative trademarks with purely descriptive words/expressions.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the INNORPI and the IP offices of the European Union Intellectual Property Network (EUIPN).
The practice paper has been made publicly available in Arabic, French and English. It is divided in two sections; the first part summarises the criteria, while the second part provides a complete explanation of the different criteria applicable in each case.
For more information and to access the practice paper, please click hereSource: www.euipo.europa.eu Mar 19, 2020 (Newsletter Issue 4/20)Filing and Recording Exclusive Distributorships RequiredOn December 24, 2019, the Ministry of Commerce issued a notification on the filing and recording of letters of exclusive importation and distribution of trademarked goods. This notification supplements the 2016 Prakas on the Procedure to Record and File Letters of Exclusive Importation of Trademarked Goods, which required importers with the exclusive right to import goods bearing specific trademarks to record that exclusivity in order to enforce their rights against third parties.
Importers must file and record a letter setting out those rights and laying out the specific models that they are authorized to import and distribute, particularly relevant in cases of multiple product models such as electronic devices.
This requirement should allow trademark owners and distributors to enforce their rights more effectively, especially against parallel imports.
For more information, please click hereSource: www.tilleke.com Mar 19, 2020 (Newsletter Issue 4/20)Modern Patents and Design Act SoonModern Patents and Design Act Soon
On January 23, 2020, the Jamaican Parliament passed the Patents and Designs Act (New Act). The New Act was passed by the House of Representatives on December 3, 2019 and received approval by the Senate on January 23, 2020. It will repeal the prevailing Patent Act of 1857 and the Designs Act of 1937. The New Act will come into effect by the Governor General’s Assent.
The New Act is a significant step towards a well-needed reform. From a system that has granted patents based on local novelty to one that makes universal novelty a criterion for patentability.
Industrial designs must be new and have individual character in order to obtain registered design protection under the New Act. This concept of ‘individual character’ is new to Jamaica’s design law but is a requirement under the Economic Partnership Agreement (EPA) between the European Community and CARIFORUM states to which Jamaica is a party. Registered designs will be protected for five years with the possibility of renewal for two consecutive five year periods which accords with international norms as TRIPS requires a minimum duration of 10 years while the EPA sets a maximum of 25 years.
For more information, please click hereSource: www.fogadaley.com Mar 19, 2020 (Newsletter Issue 4/20)Official Fee ChangesThe Finnish Patent and Registration Office (PRH) announced changes to their fees as of January 1, 2020.
In trademark matters, the PRH has introduced different fees for oppositions, applications for revocation or invalidation, and applications concerning registered trademarks which you can see below:
- Fee for filing an opposition to a registration is EUR 325 by email or on paper and EUR 275 online.
- Fee for administrative revocation or invalidation is EUR 450 by email or on paper and EUR 400 online.
- Fee for entry in the Trademark Register (for each entry) is EUR 150 by email or on paper and EUR 100 online.
In design right matters, the PRH abolished the publication fee. The application fee has been raised to EUR 250. If you file the application on paper or by email, the application fee is EUR 300.
For more Information, please click hereSource: www.prh.fi Mar 05, 2020 (Newsletter Issue 3/20)Applicants Encouraged to Use E-ServiceCNIPA issued a notice to encourage applicants to use the online service for trademarks, designs and patents of the Office to minimize the risk of the coronavirus pneumonia infection.
With regard to filing of trademarks for registration, applicants may choose from the online services of the Office, which cover services such as filing, changes, renewal and transfer of trademarks. The online service can be accessed hereSource: www.sbj.cnipa.gov.cn Mar 05, 2020 (Newsletter Issue 3/20)
Changes to Design Act in Force Soon
The changes to the Japanese Design Act will come into force on April 1, 2020. The changes cover the following:
1. Extension of the scope of protection
Designs for Graphical user interface (GUI) that are not applied on objects, e.g. images stored in a cloud and made available via a network, and designs for buildings as well as interior designs can now also be protected as designs (Art. 2 Design Act).
2. Enhancement of the related design system (system that allows the registration of designs that are similar to a design (principal design) in one's own design application or registered design) (Art. 10 of Design Act)
It will be possible to register multiple designs developed under a consistent concept. The new changes include
a) The time limit for filing related designs will be extended to 10 years from the filing date of the principal design (currently, it is only until disclosure of the registered principal design; i.e., about 8 months from the filing date of the principle design); and
(b) Registration of designs which are similar to related designs only will be possible.
3. Change in the duration of design Rights
The term is extended from “20 years from the date of registration” to “25 years from the filing date” (Art. 21 of Design Act).
4. Clarification of the level of creativity
Shapes, patterns, etc., or images published or made available through the internet will be considered in the determination of the creativity of a design (Art. 3 of Design Act).
5. Introduction of a partial design for a set of articles
Registration of a partial design for a set of articles such as the handle of a knife, fork and spoon in a cutlery set will be allowed (Art. 2 and 8 of Design Act).
6. Extension of the definition of indirect infringement
By defining subjective factors such as “the knowledge that an object can be used for the working of a registered design”, actions such as the manufacture and import of disassembled individual parts which may constitute infringing products can be controlled as an “indirect infringement” (Art. 38 of Design Act).
Source: Sonderhoff & Einsel, Japan
Mar 05, 2020 (Newsletter Issue 3/20)Notice to WIPO of Depositing and Accessing OfficeThe Norwegian Industrial Property Office (NIPO) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from January 1, 2020.
- NIPO as a depositing Office will deposit certified copies of Patent, Trademark and National Industrial Design applications and PCT international applications filed with the office on and after 01.01.2018, where applicant specifically requests services to be available;
- NIPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by January 1, 2019.
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- For patent applications, all documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.
For more information, please click hereSource: www.wipo.int Mar 05, 2020 (Newsletter Issue 3/20)Requirements of Readable Types of Data Carriers The DPMA informs about the requirements of the readable types of data carriers and the formats for the representation of trademarks (Sec. 6a Trade Mark Ordinance [Markenverordnung]).
The representations of trademarks which are filed via, or on a data carrier as an attachment to a paper-based application must fulfil certain Standards. Some of them are the following:
- Readable with no viruses or other malicious software
- Stored as a file on the root directory
- Maximum length of the file names is 32 characters
- Types of data carriers are CD-R, CD-RW, DVD-R, DVD+R, DVD-RW, DVD+RW
The file formats accepted depend on the type of trademark and the requirements for its appropriate representation. For some types of trademarks, only one file format is possible, for others the applicant may choose between several file formats. The following file formats are available for the individual types of trademarks:
- JPEG for all types of trademarks except for word marks and multimedia marks
- MP3 for sound marks and other types of trademarks
- MP4 for motion marks, multimedia marks, hologram marks and other types of trademarks
- JPEG, OBJ, STL, X3D for three-dimensional marks
It should be noted that the overall size of the files submitted on a data carrier, such as the representation of a trademark and any further attachments to the application form, must not exceed 20MB for a maximum of 20 files.
For more information, please click hereSource: www.dpma.de Mar 05, 2020 (Newsletter Issue 3/20)
New E-Filing for Designs
The Danish Patent and Trademark Office (DKPTO) has implemented a new design e-filing system, which went live on February 17, 2020.
The new system is configured to process both standard and multiple design applications. The system includes tooltips with further information and the automatic numbering of designs and views, integration with DesignClass and coloured, validated Locarno classes and subclasses, and the automatic calculation of fees as users navigate their way through the e-filing process.
The new system also allows users to file validated applications in a digital format, and contains a simplified and updated architecture and technology stack, to simplify the IT administrative process.
Source: www.euipo.europa.eu
Mar 05, 2020 (Newsletter Issue 3/20)
Changes to Trademark Law
The French Trademark Law has been changed by the Ordinance n°2019-1169 dated November 13, 2019 and Decree No. 2019-1316 dated December 9, 2019, transposing into national law the provisions of the EU Directive No. 2015/2436.
The new French Trade Mark Provisions bring major changes, concerning trademark filing, opposition, registration and renewal procedures and changes to the fee. They entered into force on December 11, 2019.
Important changes are the following:
- Requirement of graphical representation of trademarks abandoned:
Signs such as sound, motion, multimedia marks or holograms are now registrable.
- Revised filing fees:
A fee-per-class system has been introduced, which replaces the flat-rate system for the first three classes.
- Distinguishing between certification and collective marks:
Clarification of status of a collective mark provided
- Procedure for renewing French trademarks amended:
A French trademark can now be renewed within one year before its expiry date (previously 6 months). No longer can a trademark application be combined with a renewal of a trademark. Renewal fees have been increased.
- Opposition procedure changed:
Prior rights in support of an opposition gave been extended. In addition to prior trademarks it is now possible to also include the name of public entities, company names, trade names, Business names, signs, domain name whose scope is not only local.
A single opposition can now be based on several prior rights, that belong to the same holder.
Further, a new procedural timetable of opposition has been introduced. A simple online form must be completed within one month with arguments and evidence in support to start an opposition proceeding with the French National Institute for Industrial Property (INPI).
Also, genuine use of the earlier trademark subject to the obligation to use is now checked by the INPI for each of the goods or services on which the opposition is based.
On April 1, 2020, a new administrative procedures for the invalidity and revocation of trademarks will come into force. Jurisdiction to hear actions for the invalidity or revocation of a trademark will be transferred exclusively to INPI. Further, appeals to the Court of Appeals against INPI decisions will be simplified and harmonised.
Source: www.inpi.fr; www.fieldfisher.com; www.nortonrosefulbright.com
Feb 20, 2020 (Newsletter Issue 2/20)Changes to Grace Period / Official Fees ReducedThe New Zealand Trade Marks Act 2002 was amended by the Regulatory Systems (Economic Development) Amendment Act 2019, which has commenced as of 13 January 2020. The amendments bring changes to the grace period for trademark renewals and official fees.
For trademarks due for renewal on or after 13 February 2020, the grace period for renewal is now 6 months from the expiry date.
For trademarks due for renewal before 13 February 2020, the grace period for renewal will continue to be one year from the expiry date.
Further, the status for trademark registrations that are not renewed by their renewal due date has been changed to ‘Registered - past expiry date’. This will replace the old ‘Expired but restorable’ status.
Additional to that, the official fees for filing a trademark application have been reduced. It is now NZD 100 per class instead of NZD 150. The renewal fee of a trademark registration has also been reduced from NZD 350 to NZD 200 per class.
For more information, please check hereSource: www.iponz.govt.nz Feb 20, 2020 (Newsletter Issue 2/20)Accession to Singapore Treaty by UruguayOn 29 January 2020, WIPO notifies the deposit by Uruguay of its instrument of ratification of the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The said instrument contained the following declaration:
"The Eastern Republic of Uruguay makes a reservation with regard to Article 19(2), Certain Rights of the Licensee, on the grounds that its content is in conflict with existing provisions on the subject in its national legislation".
In conformity with Article 28(3), the said Treaty will enter into force on 29 April 2020.Source: www.wipo.int Feb 20, 2020 (Newsletter Issue 2/20)Public Notice on IP Rights Affected by Coronavirus OutbreakOn 28 January 2020, the China National Intellectual Property Administration (CNIPA) issued a public notice No 350 in order to issue concerning deadlines of trademarks, patents, designs affected by the Coronavirus outbreak.
With regard to trademarks the notice stipulates, that the time limit established by the Trademark Law and its Implementing Rules or specified by the CNIPA due to the epidemic and related reasons, shall be suspended from the date when the obstacles to the exercise of rights arise, and shall continue to be counted until the obstacles to the exercise of rights are removed, unless otherwise provided by law.
If a party was unable to comply with a time limit due to the Coronavirus outbreak, the party may apply in writing within 2 months from the date of elimination of the obstacles to exercise his rights, explain the reasons, provide the corresponding supporting materials, and request the restoration of the rights.
For more information, please check the notice hereSource: www.afdip.com Feb 20, 2020 (Newsletter Issue 2/20)New Trademark Law Introducing Opposition SystemOn 24 January 2020, the Serbian National Assembly adopted a new Trademark Law, which entered into force on 1 February 2020. The new Law introduces a trademark opposition system which will exist alongside the current ex officio examination on absolute and relative grounds.
Per previous regular procedure, the Intellectual Property Office performed an official examination of absolute and relative grounds for refusal of trademark applications. The rule regulating this part of the procedure has remained unchanged.
The new opposition system allows now that interested parties can file for an opposition based on relative grounds for refusal within three months after the publication of the trademark application.
For further information, please refer to the article by Ms Sara Radić, PETOŠEVIĆ Serbia, hereSource: www.petosevic.com Feb 20, 2020 (Newsletter Issue 2/20)Opposition Decisions Published by CTMOOn 18 February 2020, the China Trademark Office (CTMO) of the China National IP Administration (CNIPA) announced that the CTMO has decided to publish trademark opposition decisions online as of 1 January 2020. This measurement has been taken in order to strengthen the transparency of opposition examination, to enhance public supervision, and to promote legal administration.
A decision shall be published at its official website http://sbj.cnipa.gov.cn/ within 20 days after the decision is mailed with the following exceptions:
1. a decision is related to a party’s trade secret or personal privacy;
2. a party requested for non-disclosure and the CTMO considered the request reasonable; or
3. other special scenarios where the CTMO considers inappropriate.
The published decisions are for the inquirers’ reference only and carry no legal effect. Any damage caused by the illegal use of the information will be covered by the illegal users.
Source: CHOFN Intellectual Property, China Feb 20, 2020 (Newsletter Issue 2/20)Nice Classification Exclusively / New Official Fee / Accelerated Opposition ExaminationThe Venezuelan Patent and Trademark Office informed that all new trademark applications have to be filed exclusively under the 11th edition of the International Classification of Goods and Service for the purpose of trademark prosecution of the Nice Convention. This is effective as of 10 February 2020 and the dual system has been ceased where applications had to be filed according to the national classification along with the equivalent international class according to the Nice Agreement.
Further, the Patent and Trademark Office introduced a new official fee when filing for opposition proceedings. As from 10 February 2020, it is mandatory to include the official fee payment receipt as an annex to the opposition writ in order to receive a filing date.
In addition, the Office will introduce an accelerated examination process in order to obtain an early first instance decision of the Office on the opposition. Interested parties would have to file a writ requesting for an accelerated examination and pay the corresponding new official fee during a fixed time frame to receive the new service. It is expected that the new service will be available during the current year.
Venezuela is also preparing for a new Industrial Property Law with the purpose of designing a new, appropriate and updated legal framework involving Patent, Utility Model, Trademark, Design, Geographical Indications, Denominations of Origin, Unfair Competition and modern enforcement regulations among other aspects. The final draft must undergo a public presentation to gather participation of interested parties and a second discussion prior to approval. We will keep you posted on the developments with the assistance of our partner Mr. Sebastian Gonzalez Yanes of Citemark International IP from Venezuela.
For further information, please click here
Source: Citemark International IP, Venezuela Feb 20, 2020 (Newsletter Issue 2/20)Electronic Filing Mandatory Now / Exam Guide UpdatedThe USPTO informed that the mandatory electronic filing rule is now effective as of 15 February 2020. All communications with the USPTO in trademark matters will be electronic, except in limited circumstances. This means trademark applicants and owners will need to keep valid electronic contact information on file with the USPTO for the life of their registration.
The revised examination guide was issued on 7 February 2020. It removes the requirement that an applicant represented by counsel must regularly access and review the email account provided.
For more information, please click hereSource: www.uspto.gov Feb 20, 2020 (Newsletter Issue 2/20)Withdrawal of Notification on Division of Intl. RegistrationsOn 17 January 2020, WIPO received a communication from the Office of Bulgaria withdrawing the notification made by Bulgaria under Rule 27bis(6) of the Common Regulations under the Madrid Agreement and the Madrid Protocol (“Common Regulations”), with immediate effect.
Consequently, as from the above-mentioned date, the Office of Bulgaria can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Common Regulations.
For more information, please click hereSource: www.wipo.int Feb 06, 2020 (Newsletter Issue 1/20)
E-Filing for Designs Improved
The State Office for Inventions and Trademarks (OSIM) has fully implemented the upgrade of its front office IT system, improving the e-filing for designs.
The new e-filing service allows users to submit design views in a digital format rather than on paper, which significantly simplifies the administrative processes and increases efficiency within OSIM.
The new service is able to process standardised, multiple and divisional design applications. It also provides user guidance through the sections, previous design applications as a template to import data, and improved fees details.
Source: www.euipo.europa.eu
Feb 06, 2020 (Newsletter Issue 1/20)Official Fees IncreasedThe Tunisian Trademark and Patent Office (INNOPRI) increased the official fees for trademarks matters. This increase became effective in accordance with Governmental Decree No. 29/2020 dated January 16, 2020.
The amended official fee for filing a trademark application is TND 400 for one class and TND 100 for each additional class. There is no publication fee; however, there is cost of 80 TND for the issuance of the registration certificate. An additional 19% VAT will be applicable.
Source: JAH & Co. IP, Qatar Feb 06, 2020 (Newsletter Issue 1/20)
Notice on Extensions of Time to Respond to Office Actions
The Canadian Intellectual Property Office changed its practice regarding extensions of time to respond to office actions.
As of January 17, 2020, an applicant will need to file a proper response or demonstrate exceptional circumstances to obtain an extension of time to file a response within the specified time in the office action.
If, at the expiry of the six month period after the date of the examiner's report, the applicant fails to file a proper response, or if the reasons provided in a request are not considered to justify an extension of time, the applicant will be considered in default in the prosecution of the application.
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
- Recent change in trademark agent
- Circumstances beyond the control of the person concerned such as illness, accidents, death, bankruptcy, or other serious and unforeseen circumstances
- Transfer. There is a pending assignment filed at the Office and it would overcome a confusion objection.
- Opposition (the cited mark is the subject of a pending opposition Proceedings)
- Section 45 (summary expungement proceedings are pending against the cited mark)
- Official mark (when the applicant is negotiating a consent from the holder of an official mark)
- Division of a Protocol application
- Respond to a substantive objection that could lead to a refusal. The applicant may request an extension of time for this reason only once in the prosecution of the application
- Compile evidence of distinctiveness under subsection 32(1) of the Act. The applicant may request an extension of time for this reason only once in the prosecution of the application
This rule applies for an office action issued on or after January 17, 2020. For an office action issued prior to January 17, 2020, this practice does not apply, and an initial extension of time remains available without having to provide substantive reasons.
Source: Benoît & Côté, Canada
Feb 06, 2020 (Newsletter Issue 1/20)New Law on Marks and Geographical IndicationsOn December 17, 2019, the new Law on Marks and Geographical Indications entered into force in Bulgaria. The new law contains revisions whose aim is to mainly transfer the provisions of EU Trade Mark Directive 2015/2436 of 16 December 2015 into Bulgarian law. The new law brings significant changes to certain aspects of trademark substantive and procedural law, including a new set of absolute and relative grounds for refusal and cancellation.
Some of the important changes are the following:
- Requirement of graphical representation of trademarks abandoned (This change introduces new types of trademarks that had not existed in Bularia before)
- Procedural deadlines before the Bulgarian PTO shortened
- Start of grace period for international trademark registration clarified
- Bad faith as ground for opposition introduced only in court proceedings
- New absolute grounds for refusal introduced. Signs cannot be registered if they infringe on national, EU legislation or international agreements involving the EU or Bulgaria (e.g. geographical indications, traditional terms for wine, traditional guaranteed specialities or plant varieties)
- Possibility to cancel registrations on the grounds of earlier rights based on a plant variety or animal breed Denomination
- Single-phase payment model introduced
For further information, please refer to the article by Mr Batakliev, PETOŠEVIĆ Bulgaria, hereSource: www.petosevic.com; www.kadievaip.com Feb 06, 2020 (Newsletter Issue 1/20)Law on Geographical Indications AmendedUkraine adopted amendments to the Law on Geographical Indications on September 20, 2019. The Amendments entered into force on January 1, 2020. The changes bring the Ukrainian legislation in line with EU Regulation No. 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.
The main changes concern the redefinition of key definitions such as "geographical indication" and "designation of origin", the clarification of the eligibility criteria for applying for GI registration and the amendment of the opposition procedure and the rules for cancellation of registered GIs.
For more information, please click hereSource: www.petosevic.com Feb 06, 2020 (Newsletter Issue 1/20)Withdrawal from EU and Transition PeriodThe United Kingdom (UK) and European Union (EU) have ratified the Withdrawal Agreement and UK departed from the EU on January 31, 2020.
A transition period has been set up from February 1, 2020 to December 31, 2020.
During this period, EU law will continue to operate as it does now in the UK. The Intellectual Property (IP) system will continue as it is until December 31, 2020.
The Withdrawal Agreement ensures continued protection of existing EU-level IP rights in the UK after the end of the transition period. IPO will convert almost 1,4 million EU trademarks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on January 1, 2021.
EU trade marks
Throughout the transition period the UK will remain part of the EU trademark System. EU Trade Marks (EUTM) will continue to extend to the UK during this time.
Businesses, organisations or individuals that have applications for an EUTM which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections.
International registrations designating the European Union
During the transition period, international registrations for trademarks and designs protected via the Madrid and Hague systems which designate the European Union will continue to extend to the UK.
In accordance with the terms of the Withdrawal Agreement, international registrations for trademarks and designs that have been protected before the end of the transition period will continue to be protected in the UK after December 31, 2020. IPO is continuing to work with the World Intellectual Property Organization (WIPO) on the mechanism to ensure continued protection.
For further information, please check hereSource: www.gov.uk Feb 06, 2020 (Newsletter Issue 1/20)Accession to WIPO's Digital Access ServiceOn December 12, 2019, the Japanese Patent Office (JPO) notified the International Bureau, in accordance with paragraphs 10 and 12 of the Framework Provisions of the Digital Access Service, that it would extend the scope of the WIPO Digital Access Service (DAS) digital library to JPO Industrial Designs, as of January 1, 2020.
For more information, please click hereSource: www.wipo.int Dec 05, 2019 (Newsletter Issue 17/19)
New Official Seal for GIs
On October 16, 2019, the China National Intellectual Property Administration (CNIPA) released an official seal for geographical indications (GIs).
CNIPA is the competent Office for registering GIs and rendering official protection. Regulations governing the new seal will be released by the Office.
The current seal is still valid before the new one is used officially, and the transitional period will last until December 31, 2020.
Source: www.sbj.cnipa.gov.cn
Dec 05, 2019 (Newsletter Issue 17/19)
Rules on Regulating Trademark Filing Acts in Force
The State Administration for Market Regulation (SAMR) announced the enactment of the 'Rules on Regulating Trademark Filing Acts (Rules)', which was released in form of a SAMR Decree No. 17 and came in force from December 1, 2019. The Rules implement the amendment of the Trademark Law, effective since November 1, 2019.
The 19 specific provisions in the new Rules aim to regulate trademark filing acts from four aspects:
1.) Set up a centralized provision on trademark filing and registration acts violating the principle of good faith that used to be peppered in multiple articles of the Law and the newly-added ones summed up from practice; provide specific guidelines for representation services of trademark firms; monitor during the whole filing procedure, sanction malicious trademark filing acts at every process and every stage of trademark examination and adjudication.
2.) List the factors taken into consideration for examining malicious trademark filing acts and illegal representation acts; elevate operability and transparency of trademark examination.
3.) Sanction malicious trademark filing acts and illegal representation acts; set up a fine treble of illegal gains of the malicious trademark applicant and no more than 30,000 yuan; set up a maximum 100,000 yuan fine on trademark firms aiding malicious trademark filing and suspension of services if offense is deemed aggravated.
4.) Streamline trademark filing routes and procedures and make the system easier to use for applicants; elevate administration services.
Source: www.sbj.cnipa.gov.cn
Dec 05, 2019 (Newsletter Issue 17/19)Accession to Hague Agreement on International Registration of Industrial DesignsOn October 2, 2019, the Government of Samoa deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Samoa is 12 months from the filing date or, where priority is claimed, from the priority date; and
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Samoa in respect of industrial designs is 15 years.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force, in respect of Samoa, on January 2, 2020.
For further information, please check hereSource: www.wipo.int Dec 05, 2019 (Newsletter Issue 17/19)Accession to Hague Agreement on International Registration of Industrial DesignsOn September 30, 2019, Vietnam deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a brief description of the characteristic features of the design, pursuant to Article 5(2)(b)(ii);
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a claim for protection of the design, pursuant to Article 5(2)(b)(iii), in compliance with the common form: “Application for overall protection for industrial design(s) as shown and described”;
– the declaration referred to in Article 11(1)(b) of the 1999 Act, whereby the legislation of Viet Nam does not provide for the deferment of the publication of an industrial design;
– the declaration referred to in Article 13(1) of the 1999 Act, whereby, in accordance with the legislation of Viet Nam, only one independent and distinct design may be claimed in a single international application, except that:
(i) designs that are the subject of the same international application must belong to the same set of composition of items and conform to a requirement of unity of design, unity of use or accompaniment of each other in use, or
(ii) a design may be accompanied by single or multiple options that are variations of that design and which must conform to a requirement of unity of design and be insignificantly different from that design;
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Viet Nam in respect of industrial designs is 15 years;
– the declaration referred to in Rule 9(3) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, whereby, where the product which constitutes the industrial design is three-dimensional, a perspective view of the industrial design is required; and
– the declaration for the application of level three of the standard designation fee, under Rule 12(1)(c)(i) of the Common Regulations.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force, in respect of Vietnam, on December 30, 2019.
For further information, please check hereSource: www.wipo.int Dec 05, 2019 (Newsletter Issue 17/19)
PoA at Time of Filing Now
The Palestinian Authority in the West Bank has introduced some new practices relating to powers of attorney (PoA) that are effective since November 2019.
The main change is that the late filing of a PoA is no longer possible, i.e., a PoA must accompany the application at the time of filing.
Source: IP Factor
Dec 05, 2019 (Newsletter Issue 17/19)Accession to Hague Agreement on International Registration of Industrial DesignsOn October 3, 2019, Israel deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through its Office;
– the declaration referred to in Article 7(2) of the 1999 Act, whereby, in connection with an international application in which Israel is designated, and in connection with the renewal of any international registration resulting from such an international application, the prescribed designation fee shall be replaced by an individual designation fee. The details of the declaration and the amount of the individual designation fee will be the subject of a further information notice;
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Israel is six months from the filing date;
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Israel for industrial designs is 25 years; and
– the declaration referred to in Rule 18(1)(b) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, whereby where Israel is designated, the prescribed period of six months for notifying a refusal of the effects of an international registration is replaced by a period of 12 months.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force with respect to Israel on January 3, 2020.
For further information, please check hereSource: www.wipo.int Dec 05, 2019 (Newsletter Issue 17/19)IP Enterprise Courts Outside LondonThe expansion of the UK Intellectual Property Enterprise Court (IPEC) has continued with claims now able to be issued in seven new locations outside of London.
The IPEC is a specialist court for intellectual property disputes. It is a division of the High Court and deals with less complex and lower value claims (less than £500,000 in damages sought) and is designed to provide access to justice for small and medium sized enterprises or individuals. The IPEC also has a small claims track which hears the most straightforward intellectual property cases, where less than £10,000 is claimed.
For further information, please check hereSource: K&L Gates Dec 05, 2019 (Newsletter Issue 17/19)Multiclass System and Co-Ownership in Force SoonThe National Intellectual Property Institute (INPI) issued the Resolutions below, which entered into force on the same date:
- Resolution INPI/PR No. 247/2019 of September 9, 2019, which sets out the procedure for the registration of trademarks under the Madrid Protocol;
- Resolution INPI/PR No. 248/2019 of September 9, 2019, which provides for the registration of trademarks in a multiclass system; and
- Resolution INPI/PR No. 245/2019 of August 27, 2019, which provides for the regime of co-ownership of trademarks.
Resolutions INPI/PR 248/2019 and 245/2019 state that the filings of multiple-class applications and the co-ownership of trademarks will only be available in the e-INPI System as of March 9, 2020.
For further information, please check here and refer to the article by Mr. Serino Lia, Lia e Barbosa IP Lawyers, hereSource: www.wipo.int Dec 05, 2019 (Newsletter Issue 17/19)Hearings Guidelines UpdatedOn November 8, 2019, the IPONZ Hearings Office has recently updated the following guidelines on proceedings under the Trade Marks Act 2002 with regard to the costs awards for uncontested cases and to how parties may be heard.
The Hearings Office will no longer award costs in any case where a proceeding applicant contacted the applicant/owner prior to lodging its case. The default position in uncontested cases will be one of not awarding costs, save for where there are circumstances that justify costs being awarded, or where the initiating party would almost certainly have succeeded.
Further, the Hearings Office has added new guidelines on the incorporation of Māori tikanga as part of the hearing process. This is an option for one or both of the parties involved in the hearing and must be notified in advance so that the necessary preparations can be made.
The Hearings Office has also clarified its practices on hearing venues, notably on the ability to attend these by means of video-conferencing.
For more information on the costs award, please click here and on the how you can be heard guidelines, please click hereSource: www.iponz.govt.nz Dec 05, 2019 (Newsletter Issue 17/19)Pharmaceutical Licensing Regulations AmendedOn April 10, 2019, the Uzbek President signed a decree which intends to accelerate the development of the pharmaceutical industry in Uzbekistan in 2019–2021. The decree entered into force on August 17, 2019.
According to amendments introduced by the decree, licenses for the production of pharmaceuticals are no longer granted by the Ministry of Health, but by the Agency for the Development of the Pharmaceutical Industry established under the same ministry.
The decree has also introduced a temporary measure intended to give priority to local manufacturers in the public procurement of pharmaceuticals. Namely, from July 1, 2019 until December 31, 2020, when a state body issues a pharmaceutical tender, if there are two or more local manufacturers of pharmaceutical products of the same international nonproprietary name (INN), all tender applications filed by foreign manufacturers of products of the same INN will be refused. Further developments after December 31, 2020 will depend on the results of this temporary measure.
For further information, please check hereSource: www.petosevic.com Dec 05, 2019 (Newsletter Issue 17/19)IP Legislation and Procedural Changes SoonIPONZ informs that Royal Assent has been given to the Regulatory Systems (Economic Development) Amendment (No 2) Bill (“the Bill”) affecting Intellectual Property legislation.
The Bill amends a range of statutes, including the Trade Marks Act 2002, the Geographical Indications (Wine and Spirits) Registration Act 2006 and the Plant Variety Rights Act 1987. The amendments to these Acts will come into force on January 13, 2020. Most important changes are the following:
Impact on the Trade Marks Act 2002
The status “Expired but restorable” will be replaced by “Registered (past expiry date)” (Sections 59, 60 and 60A)
- The “grace period” to restore a trademark following its expiry will be reduced to 6 months.
- A trademark that has expired this way will remain on the register under the new status “Registered (past expiry date)”. This will enable the trademark to be treated as a ‘registered’ case for:
i. Allowing the trademark owner to perform actions to maintain the mark (e.g. assignment or cancellation).
ii. Allowing a third party to take action against the trademark (e.g. revocation for non-use).
- Some benefits relating to the enforcement of the trademark will not apply to “Registered (past expiry date)” trademarks.
Any marks that are in “Expired but restorable” status prior to the amendments coming into force will remain at that status and may be renewed using the current procedure.
Restriction on certification mark and standard trademark ownership in the same goods or services (Section 13A and 14):
A new Section 13A and an amended Section 14 of the Trade Marks Act 2002 will clarify that the owner of a certification mark may not register a standard trade mark in the same goods or services, or vice-versa.
Commissioner may require security for Hearings costs (Section 167):
Currently, security for Hearings costs can only be ordered if the party is based overseas. A new Section 167 will extend the powers of the Commissioner to order security if there is reason to believe that a party will be unable to pay costs.
Revocation of trade mark registration (Sections 65, 66 and 68):
Minor amendments will be made to Section 66 to clarify that there is no discretion to maintain a mark’s registration when the grounds for revocation have been made out, and there are no special circumstances.
Declarations on behalf of certain persons (Section 191):
Section 191 of the Trade Marks Act 2002 will be repealed, as this is already covered by other statutes.
Impact on the Geographical Indications (Wine and Spirits) Registration Act 2006
The new “Registered (past expiry date)” status will replace the original “Expired but restorable” status for renewal procedures under the Geographical Indications (GI) Act.
No geographical indications are due to be renewed until 2022, so this change is expected to have minimal impact.
Impact on the Plant Variety Rights Act 1987
Applicants and owners may provide an address for service in either New Zealand or Australia.
For further information, please check hereSource: www.iponz.govt.nz Nov 19, 2019 (Newsletter Issue 16/19)IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationSyria has notified WIPO in accordance with Rules 27ter(2)(b) and 40(6) of the Common Regulations.
As a result, the Office of the Syrian Arab Republic will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).
For further information, please check Information Notice No. 55/2019 hereSource: www.wipo.int Nov 19, 2019 (Newsletter Issue 16/19)
Accession to Hague Agreement on International Registration of Industrial Designs
On October 3, 2019, the Government of Israel deposited with WIPO its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force, with respect to the State of Israel, on January 3, 2020.
Source: www.wipo.int
Nov 19, 2019 (Newsletter Issue 16/19)
E-Filing Improved
The Patent Office of the Republic of Bulgaria (BPO) improved its e-filing system.
Design e-filing is now integrated with the Harmonised Database of Product Indications (DesignClass). The BPO is the second EU national and regional IP office to implement DesignClass in its e-filing system.
Further enhancements include a new interface for selecting goods and services in trademark e-filing, as well as other usability improvements.
Source: www.euipo.europa.eu
Nov 19, 2019 (Newsletter Issue 16/19)New Trademark Examination GuidelineOn September 30, 2019, the Turkish Patent and Trademark Office published a new Trademark Examination Guideline that defines the criteria regarding the examination of trademark applications on absolute grounds within the scope of the Industrial Property Code that came into force in 2017.
The main purpose of the Guideline is to update the previous guideline, which was in force since 2011. The new Guideline clarifies the principles of absolute grounds for refusal that are explained in the IP Code and provide consistency in the Office’s decisions.
Within this context, the absolute grounds for refusal that are included between the articles 5(1)(a) and 5(1)(i) of the Law are examined in 12 main sections. The Guideline consists of 379 pages and includes a great number of examples in detail. The examples are given by taking the decisions of the Courts and the Office and also the recent EU developments into consideration.
For more information, please click hereSource: www.gun.av.tr Nov 19, 2019 (Newsletter Issue 16/19)Fax Services to be Discontinued from Jan 2020The Swiss Intellectual Property Institute will discontinue its fax services at the end of 2019.
E-mail and post are offered as alternative means of submission.
To be considered legally-binding and in observance of time limits, however, e-mail submissions for Trademarks must be sent to the specially designated e-mail address 'tm.admin@ekomm.ipi.ch'
You find further information on electronic submission of the IPI Website hereSource: www.ige.ch Nov 19, 2019 (Newsletter Issue 16/19)
Soft Opening of New Trade Mark Register
Myanmar’s Trade Mark Act will be the first of the four new intellectual property legislation to be implemented and is expected to come into force in the middle of next year.
The Trademark Office of Myanmar is expected to begin working in form of a ‘soft opening’. Further details are expected to be released soon. During the soft launch the Office will only accept applications from trademark proprietors who have prior registrations with the Office of the Registration of Deeds.
Proprietors are strongly advised to secure the earliest filing date during this soft opening period which is expected to last three to four months. No official fees will be collected, and all applications submitted during this period will be treated as submitted on the first day that Myanmar’s Trade Mark Register is established.
For those who have not yet registered a Declaration of Ownership, should consider this as soon as possible in order to try to make use of the possibility of an early submission during the soft opening period.
Source: www.dentons.rodyk.com; www.kashishworld.com
Nov 19, 2019 (Newsletter Issue 16/19)
Accession to Lisbon Agreement
On October 17, 2019, WIPO notified the accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979 ("Lisbon Agreement") by the Dominican Republic.
The said instrument contained the following declarations:
- that for the purposes of the application of the Lisbon Agreement in the Dominican Republic, "… the applicable guiding principle shall be that priority for the national registration of a prior trademark shall confer rights enforceable against the application for registration of a subsequent Appellation of International Origin using the same trademark. Similarly, terms that have become generic may not be eligible for registration as Appellations of International Origin under the Lisbon Agreement; and
- likewise, Appellations of International Origin composed of compound terms for which registration is sought under the Lisbon Agreement may be registered either in their entirety, or registration may be granted for only one term, having due regard to the prior existence of similar terms in the national register…".
The said Agreement will enter into force, with respect to the Republic of Albania, January 17, 2020.
Source: www.wipo.int
Nov 19, 2019 (Newsletter Issue 16/19)Accession to Geneva Act of Lisbon AgreementWIPO informed that the DPR Korea has accessed to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act") on October 8, 2019.
The Geneva Act will enter into force three months after the accession of five eligible parties.
For more information, please click hereSource: www.wipo.int Nov 19, 2019 (Newsletter Issue 16/19)
Accession to Singapore Treaty
WIPO notifies the accession of Trinidad and Tobago to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Trinidad and Tobago, on January 4, 2020.
Source: www.wipo.int
Nov 19, 2019 (Newsletter Issue 16/19)Amended Trademark Law in ForceThe Standing Committee of the National People's Congress announced the amendments to the Trademark Law on April 23, 2019. The fourth amendment to the Trademark Law entered into force on November 1, 2019.
The revisions intend to create an environment with better legal certainty and to avoid unfair competition. The amendment aims at combating bad faith applications by creating new grounds for challenge at all stages of criminal proceedings.
The State Administration for Market Regulation issued provisions on the Regulation of Trademark Application and Registration Behavior to facilitate the implementation of the amendments which will take effect from December 1, 2019.
For more information, please click hereSource: www.bakermckenzie.com Oct 21, 2019 (Newsletter Issue 15/19)Industrial Property Act 2019 PublishedOn August 10, 2019, the new Industrial Property Act 2019 was published in the Official Gazette after its approval of the Interim President of the Republic of Mauritius. The Act essentially aims to modernise the IP framework in Mauritius, promote innovation and facilitate the registration of industrial property rights. It also provides for Mauritius' accession to the Treaties administered by WIPO. It is not yet clear when the Act will come into effect. The date on which it will enter into force needs to be determined by the proclamation. Different dates may be set for the entry into force of different sections.
The most important changes regarding trademarks are the following:
- Allowance of registration of a mark by more than one owner may be determined by the registrar
- Prior user of an unregistered mark may oppose a trademark application by submitting evidence
- Initial applications may be divided into several applications that will retain the filing date and rights of priority of the initial application
- Rights conferred by the registration of a mark will not extend to acts relating to articles put on the market in Mauritius by the registered owner or with his consent (national exhaustion)
- Application for certification marks and for geographical indications possible
For more Information, please click hereSource: www.ensafrica.com, www.foreign.govmu.org Oct 21, 2019 (Newsletter Issue 15/19)New Electronic Services PortalThe Mexican Institute of Intellectual Property (IMPI) has introduced a new electronic services portal.
The following services are provided:
- Application for registration of trademarks and patents
- Review of existing trademark and patent records
- Make payments and receive the invoice
- Consult the notices of your administrative declaration procedure
- Registration of power of attorney
An e-mail address and a unique Population Registration Code (CURP) are required to use this service. For more information, please click hereSource: www.eservicios.impi.gob.mx; www.merida-ip.com Oct 21, 2019 (Newsletter Issue 15/19)
Accession to Madrid Protocol
On September 27, 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol.
By this, local brand owners in Malaysia can begin using the Madrid System to protect their marks in the 121 territories of the System’s other 105 members by filing a single international application.
The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7)(a) of the Protocol (individual fees), and under Rules 7(2) (intent to use) and 20bis(6)(b) (recording of licenses in the International Register has no effect in Malaysia), of the Common Regulations.
The Protocol will enter into force for Malaysia on December 27, 2019.
Source: www.wipo.int
Oct 21, 2019 (Newsletter Issue 15/19)E-Filing for Trademark Submissions Mandatory SoonThe United States Patent and Trademark Office (USPTO) informs that electronic filing for trademark submissions will become mandatory with limited exceptions as of December 21, 2019.
Trademark applicants and registrants will be required to:
- File their trademark applications and documents concerning trademark applications and registrations online using the USPTO's Trademark Electronic Application System (TEAS).
- Provide and maintain an accurate email address for receiving correspondence from the USPTO about their particular application or registration.
- Provide and maintain an accurate postal address to ensure that the USPTO can contact them if their email correspondence address doesn't work.
With limited exceptions, paper and fax submissions will no longer be accepted. Email submissions will continue to not be accepted. Only informal communication regarding your application or registration can be done by email.
For more Information, please click hereSource: www.uspto.gov Oct 10, 2019 (Newsletter Issue 14/19)Official Fees Will Be Changed in 2020IPONZ informs that the Trade Marks Amendment Regulations 2019 will come into force on February 13, 2020, and will amend the Trade Marks Regulations 2003 (the principal regulations) by altering fees payable to the Commissioner of Trade Marks.
Fees for requests for preliminary advice as to whether a trademark has a distinctive character, or for search advice as to whether an identical or a similar mark is already on the trademarks register, will be altered. The request for preliminary advice only, per class, will increase from NZD 40 to NZD 50. The request for search advice only, per class, will increase from NZD 40 to NZD 50. The request for preliminary advice and search advice, per class, will decrease from NZD 80 to NZD 50.
Fees for applications to register trademarks or renew trademark registrations are decreased. The new official fee for filing a trademark application will decrease from NZD 150 to NZD 50 per class, if the relevant preliminary advice and relevant search advice were both provided and the application is not for the addition of a class of goods or services to an existing application..
For more Information, please check the Trade Marks Amendment Regulations 2019 hereSource: www.iponz.govt.nz Oct 10, 2019 (Newsletter Issue 14/19)
USPTO Portable Media Device Policy Changing
Beginning October 1, 2019, the USPTO will prohibit the use of personal removable media storage devices, including USBs, with any USPTO computer, docking station, or monitor.
Such devices include:
- Portable disk drives such as USB drives or memory cards
- Digital versatile discs (DVDs)
- Read/write compact discs (CDs)
- Devices that can operate as removable media storage devices (e.g. PDAs, digital cameras, and Apple iPods).
Visitors who need to share files with USPTO employees must transmit their data via email, cloud-based, or secure-file sharing services.
Source: www.uspto.gov
Oct 10, 2019 (Newsletter Issue 14/19)Notification on Recording of a License in the International RegisterOn August 8, 2019, the Office of Germany withdrew, with immediate effect, the notification made under Rule 20bis(6)(a) of the Common Regulations.
Consequently, as from that date, the recording in the International Register of a license granted in respect of Germany relating to an international registration of a mark has the same effect as if it had been made directly in the national Register of the Office of this Contracting Party.
For further information, please check Information Notice No. 55/2019 hereSource: www.wipo.int Oct 10, 2019 (Newsletter Issue 14/19)Flexible Approach on Mediation ImplementedThe Intellectual Property Office of the Philippines (IPOPHL ) will embark on another first in alternative dispute resolution (ADR) by implementing the Mediation Outside Litigation Service on September 2, 2019.
The Mediation Outside Litigation Service is a flexible approach on mediation which will allow parties to submit their dispute to mediation even before or without filing a case. This gives parties the opportunity to reach an agreement at the earliest possible instance.
For further information, please view hereSource: www.ipophil.gov.ph Oct 10, 2019 (Newsletter Issue 14/19)Changes to the TEAS / TEASi to Be Implemented SoonThe USPTO informs that changes to the Trademark Electronic Application System (TEAS) and TEASi (international) will be implemented on October 26, 2019 as a part of their effors to build a more secure Trademark filing System.
To access and file forms, customers will need to log in to a USPTO.gov account with a two-step authentication. These measures will allow the Office to better track filing activity and reduce misuse of our electronic forms.
Furthermore, TEAS orTEASi sessions will time out after 30 minutes.
For further information, please view hereSource: www.uspto.gov Oct 10, 2019 (Newsletter Issue 14/19)Important Changes to Trademark Law in ForceOn June 19, 2019, a new Law on Trademarks entered into force introducing important changes and clarifying the trademark registration procedure. Some of the following changes can be seen below:
- Changed definition of trademarks implies that non-traditional trademarks will be denied protection
- Protection period for marks filed after Nov 5, 2008 is 10 years from the filing date
- Publication of application (formerly publication of registration)
- Use of class headings no longer possible when filing a trademark application
- Grounds for refusal divided (absolute/relative) and new grounds for refusal and for invalidation added
- Clarification which state bodies handle trademark invalidations
- Accelerated procedure of examination for trademark application available
- Exclusion of previously existing articles relating to the protection of well-known trademarks
For further information, please click hereSource: www.petosevic.com Sep 19, 2019 (Newsletter Issue 13/19)
No Joint Renewal Requests Required Soon
Beginning October 24, 2019, renewal requests for registered trademarks owned jointly by several owners can be filed by any one of the joint owners alone. This amendment to the Trademark Act (TMA) was published on April 23, 2019, and is meant to ease the burden of joint trademark owners, who are currently required to file such renewal requests jointly.
Source: www.kimchang.com
Sep 19, 2019 (Newsletter Issue 13/19)Design Protection Act Amendment SoonThe Korean Intellectual Property Office recently announced proposed changes to the Enforcement Regulation of Korean Design Protection Act ("Design Protection Act"), which are likely to go into effect in October 2019.
One of the proposed changes will enable design patent applicants/registrants to correct inventor information after receipt of the Notice of Allowance. Currently, once the Notice of Allowance is issued, it is not possible to amend the application in any way, including inventor information. This means that inventorship cannot be corrected once the Notice of Allowance is issued.
For more information, please click hereSource: www.kimchang.com Sep 19, 2019 (Newsletter Issue 13/19)Exam Guide on U.S.-Licensed Attorney Requirement RevisedThe USPTO issued the revised exam guide “Requirement of U.S.-Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants (September 2019)” after receiving requests for additional clarification regarding implementation of the final U.S.-licensed attorney rule.
To access the revised Exam Guide 4-19, please click hereSource: www.uspto.gov Sep 19, 2019 (Newsletter Issue 13/19)
Correspondence on International Registrations to Applicant/Canadian Agent Only
With regard to International Registrations, the Canadian Intellectual Property Office (CIPO) will send correspondence to the applicant or an appointed Canadian trademark agent only. This is in accordance with the new Trademarks Regulations which came into force on June 17, 2019.
In consequence CIPO is not required to send all the WIPO correspondence to the foreign agent. CIPO however, will issue a courtesy letter to the foreign representatives informing them that all future correspondence will be sent only to the applicant or appointed Canadian trademark agent.
Source: Benoit & Côté, www.benoit-cote.com
Sep 19, 2019 (Newsletter Issue 13/19)
Official Fees Increased
The Intellectual Property Office of Argentina (INPI) has implemented amendments to it's fee schedule for trademarks, patents, utility models and industrial designs.
As of July 2019, Argentina’s fee amendments are the first since 2017. The fees for trademark filing have increased by 30% from ARS 1,700 to ARS 2,210. The trademark renewal fee has also inflated by 30%, from ARS 2,100 to ARS 2,730.
Source: www.ip-coster.com
Sep 19, 2019 (Newsletter Issue 13/19)Law on Geographical Indications PublishedThe Law on Geographical Indications was signed by the Russian President and officially published on July 26, 2019. The new Law will enter into force one year after its publication on July 27, 2020. The provision regarding liability for illegal use of a Geographical Indication (GI) symbol alongside an unregistered GI will come into effect on July 27, 2024.
The new law defines GI as "a sign identifying a product that originates from a definite geographical territory, with a certain quality, reputation or other characteristics which are essentially attributed to its geographical origin." Foreign applicants can successfully obtain GI protection in Russia if the GI is protected in the applicant’s own country and if it meets Russian legislative requirements.
For more information, please click hereSource: www.petosevic.com Sep 19, 2019 (Newsletter Issue 13/19)Trademark Registration Mobile App IntroducedThe Intellectual Property Office of Singapore (IPOS) has introduced the world first trademark registration mobile app “IPOS Go”. With the new app trademark applicants can now file their trademarks directly with IPOS via their mobile devices.
The app offers a simplified user interface and features that create a seamless and fuss-free application experience, making it easier and faster for business owners to submit their applications. Further, the app integrates artificial inteligence (AI) technology to enhance searches for similar trademarks on the IPOS register, which can prevent applicants from filings for trademarks that are too similar to existing ones. Additional to that the applicant receives the registrations updates via its mobile device. The app is available via the Apple App and Google Play store.
For more information, please click hereSource: www.ipos.gov.sg Sep 19, 2019 (Newsletter Issue 13/19)Ukrainian Official Language for Product Labeling / Advertising RequiredThe new Ukrainian language law requires the use of the Ukrainian language in product labeling and advertising as of July 16, 2019, when the law entered into force. Foreign language is in certain cases allowed but the scope of information provided in the foreign language cannot exceed the scope of information provided in the Ukrainian language.
The Ukrainian language must be printed on the product packaging. In case the packaging contains information in another language, a sticker with the information in the Ukrainian language must be placed on it.
For more information, please click hereSource: www.petosevic.com Sep 05, 2019 (Newsletter Issue 12/19)IP Court with Extended Jurisdiction The Portuguese Parliament has adopted a law (Law 55/2019 of 5 August 2019) amending the Law of the Organization of the Judiciary System, in respect of two important aspects in the field of intellectual property.
Firstly, the law gives new powers to the Intellectual Property Court in the area of copyright and also in the contractual field of industrial property rights.
Secondly, Law No. 55/2019 creates a new section in the Lisbon Court of Appeals specializing in intellectual property and competition, regulation and supervision which will have jurisdiction over the causes of the IP court and the Competition, Regulation and Supervision court.
The amendments will enter into force on October 1, 2019.
For more information, please click hereSource: www.sgcr.pt Sep 05, 2019 (Newsletter Issue 12/19)
New Trade Mark Opposition Tribunal
On June 19, 2019, the Permanent Secretary of the Federal Ministry of Industry, Trade and Investment inaugurated a new Trade Mark Tribunal, with the view of accelerating oppositions and related matters.
The new Trade Mark Tribunal will function as the administrative arm of the Registry of Trade Marks and the idea is that, in practice, the Registrar of Trade Marks will delegate this administrative function to competent officers while under the supervision of the Registrar.
It is to be hoped that the Tribunal will expedite the dispensation and resolution of opposition matters in Nigeria and eliminate the current backlogs in opposition matters.
Source: www.adams.africa
Sep 05, 2019 (Newsletter Issue 12/19)Regulation on Implementation Industrial Property Code AmendedThe Turkish Regulation on the Implementation of the Industrial Property Code has been amended by a regulation published in the Official Gazette on 8 July 8, 2019 (No. 30825).
The requirement of notarised signature declarations for natural persons and notarised signature circulars for legal persons has been abolished for a number of procedures, in particular for withdrawals. This is the case for example, when
- renewal requests are submitted
- trademark and design applications prior to registration are withdrawn
- trademark or design rights after registration are waived
- oppositions before the Patent and Trademark Office are withdrawn
- appeals against the Patent and Trademark Office’s decisions are withdrawn
As a result of the amendments, rights holders and the Patent and Trademark Office now have significantly less paperwork to fill out in most procedures, which should accelerate prcedures under the IP Code.
For more information, please click hereSource: www.gun.av.tr Sep 05, 2019 (Newsletter Issue 12/19)Guidelines on Administrative Trademark Cases PublishedOn April 24, 2019, the Beijing High Court published a new set of Guidelines for the hearing of administrative cases concerning trademark prosecution. This time, the document is much more extensive with 162 articles. The Guidelines are divided into two parts: procedural issues and substantive matters.
For more information, please click hereSource: www.wanhuida.com Sep 05, 2019 (Newsletter Issue 12/19)
New Online Filing System Implemented
On August 17, 2019, the Directorate General of Intellectual Property (DGIP) announced the launch of new online filing system for registration of new trademark, patent and industrial design applications. Manual filing of new IP applications is no longer accepted.
As the new system is currently available for new applications only, the old system is still available to be used for other transactions; namely renewal, change of name or address, assignment, and other works.
Source: www.ambadar.co.id, www.agip.com
Sep 05, 2019 (Newsletter Issue 12/19)
Tobacco Plain Packaging Law Published
The Ministry of Health (MOH) has introduced a subsidiary legislation to implement the new packaging and labeling requirements for all tobacco products in Singapore. The Tobacco (Control of Advertisements and Sale) (Appearance, Packaging and Labelling) Regulations 2019 were published July 1, 2019, (SP Regulations) and will come into operation 12 months from that date.
Thus, all tobacco products, including cigarettes, cigarillos, cigars, beedies, and other roll-your-own tobacco products sold in Singapore, must have standardized packaging and enlarged graphic health warnings (SP Measures) from July 1, 2020, onwards.
Manufacturers, wholesalers, and retailers may face a jail term of up to six months and/or a fine of up to SGD 10,000 (USD 7,235), should they fail to conform to the new law as first-time offenders. Repeat offenders will face heavier penalties.
SP Regulations and SP Measures mandate that logos, colors, images, and any promotional information associated with the brand are not allowed on the packaging. Product and brand names will instead be presented in a standardized font style and color. The minimum size of graphic health warnings (such as warnings about gum disease) on packaging will be increased from the current 50 percent to 75 percent of the packaging surface.
A three-month transition period will be provided from April 1, 2020, to June 30, 2020, to allow tobacco products that comply with either the current Tobacco (Control of Advertisements and Sale) (Labelling) Regulations 2012 or the SP Regulations to be imported into, or distributed, sold, offered for sale, or possessed for sale in Singapore. The transition period will help tobacco manufacturers, wholesalers, and retailers to prepare for the full implementation of the SP Regulations from July 1, 2020, onward.
Source: www.mirandah.com; INTA Bulletin, August 15, 2019, Vol. 74, No. 14
Sep 05, 2019 (Newsletter Issue 12/19)Regulations on Procedure for Examination of Appeal and Cancellation Petitions AmendedSection 96 of the Trademark Act empowers the Thai Trademark Appeal Board (TTAB) to examine all appeals and cancellation petitions filed under the Act. The TTAB’s duties and powers regarding examination of appeals are regulated by various versions of the TTAB’s Regulations on the Procedure for Examination of Appeal and Cancellation Petitions. On 25 March 2019, a new edition of the Regulations came into force.
Procedural Changes:
- The Regulations will eliminate former appeal submission requirements that 19 copies of an appeal be submitted, replacing it with just one copy.
- Evidence accompanying appeals are required to be filed in only one copy as before.
- Section 10 of the new Regulations demands that a comprehensive List of Evidence be submitted along with each appeal, and that all document copies submitted as appeal evidence be certified correct by the applicant or its authorized agent.
- Section 11 requires that all foreign-language documents be translated into Thai before submission, and that such translation be duly certified as correct by the translator.
Further, the TTAB, under Section 12 of the Regulations, is now authorised to substitute grounds of rejection during its examination of an appeal and can review the Trademark Registrar’s decisions.
For more information, please click hereSource: www.spruson.com Sep 05, 2019 (Newsletter Issue 12/19)New Trademarks Act 2019 SoonThe long-awaited Bill of the new Trademarks Act 2019 was tabled in the Malaysian Parliament on April 11, 2019 and approved with some amendments by the Lower House (Dewan Rakyat) on July 2, 2019, and by the Upper House (Dewan Negara) on July 23, 2019.
Some of the key changes are the following:
- Accesssuib to the Madrid Protocol & multi-class applications
- Recognition of non-traditional trademarks
- Application date will be the filing date
- Examination on absolute and relative grounds
- Notification of Registration is issued
- Non-Use Revocation by Registrar
- Registration of Registered User Abolished
- Registration conclusive after 5 years instead of 7 under the current Act
- Remedy for groundless threats of infringement proceedings
- Conclusion & Transitional Provisions
It is expected that the new Act will come into effect by the last quarter of 2019. Procedural clarification will be given by the Trademark Regulations 2019 which have not been released.
For further information, please check the article of our contributor the law firm Henry Goh & Co. Sdn Bhd from Malaysia hereSource: www.henrygoh.com; www.spruson.com Sep 05, 2019 (Newsletter Issue 12/19)New Food Labeling Law in ForceThe Ukrainian law on the provision of food information to consumers, adopted by the Ukrainian Parliament on December 6, 2018, entered into force on August 6, 2019. The requirements related to food information and labeling were previously regulated by the law on consumer rights protection.
The new law was adopted to fulfill Ukraine’s obligations under the EU-Ukraine Association Agreement. According to the law, each food product intended for the end consumer must contain accurate and easily comprehensible information which must not mislead the consumers regarding the product’s characteristics, properties and composition. This requirement applies both to the advertising of food products and to the manner they are presented for sale, including their form, appearance, and packaging.
The State Service for Food Safety and Consumer Protection is responsible for ensuring compliance with the requirements. In case of a breach, the law prescribes fines of up to EUR 4,400.
The law provides for a transition period of three years and does not require immediate relabeling of all food products.
For more information, please click hereSource: www.petosevic.com Sep 05, 2019 (Newsletter Issue 12/19)
Time to Response Extended
Pursuant to Notice 4/2019, the Registrar of the Malaysian Trademark Office informs that the deadline to make payment or to response to any office actions issued by the Registrar between October 1, 2018, until June 30, 2018, has been extended to September 30, 2019. This notice shall not be applicable to the opposition proceedings and renewal matters.
Source: www.myipo.gov.my
Aug 22, 2019 (Newsletter Issue 11/19)
New Trademark Law
The new Law on Intellectual Property No. 38/NA, dated November 15, 2017 (the “New IP Law”) came into effect. This New IP Law replaces the Law on Intellectual Property No. 01/NA, dated December 20, 2011.
A new procedure for trademark opposition has been introduced. New trademark applications will be published electronically. Third parties can oppose the registration of the mark concerned within 60 days of the publication of a new application.
Further, the term of protection of registered Laos trademarks has be changed. Trademark registrations will be valid for a period of 10 years following the filing date and not from the registration anymore.
Lastly, new trademarks have been introduced. 3D images and animated images are now registrable.
Source: www.daitin.com.vn
Aug 22, 2019 (Newsletter Issue 11/19)
Easing of Translation Requirements for Marks with Foreign Words or Characters
The Intellectual Property Office of Singapore released Circular No. 4/2019 stating that trademark applicants are no longer required to provide a translation and/or transliteration of foreign words and/or characters that appear in their marks as of April 15, 2019.
The Office informs that this process will be automated, and applicants need only to enter all the words and/or characters appearing in the mark in text format on the Form TM4. For international registrations designating Singapore, the Office will attempt to automatically generate the translation and transliteration of the foreign words and/or characters appearing in the mark.
If the automated generation of the translations is not possible, the Office may request the applicant to provide the relevant words and characters in text format (or any supporting translation documents).
Source: www.ipos.gov.sg
Aug 22, 2019 (Newsletter Issue 11/19)
Online Services for Trademarks Upgraded
The Cypriot Department of Registrar of Companies and Official Receiver (CY DRCOR), with the support of the EUIPO’s European Cooperation Projects, has upgraded its existing online services for trademarks.
The new e-filing solution for trademarks became available on July 15, 2019, bringing improved e-filing and online services for trademarks to Cypriot users. The project has been carried out with the support of different teams from the EUIPO and DRCOR.
This new version also contains functions which, when released, will be compatible with the regulatory changes brought about by the transposition of EU Directive to approximate the laws of the Member States relating to trade marks (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015).
Source: www.euipo.europa.eu
Aug 22, 2019 (Newsletter Issue 11/19)
New Online Services for Trademarks and Designs Launched
The National Industrial Property Institute of Portugal (INPI), with the support of the EUIPO’s European Cooperation Projects, has launched a set of new online services for filing trademark and design applications online. The new digital services platform became available on July 1, 2019.
With this implementation, INPI also supports the implementation of the transposition of the EU Directive to approximate the laws of the Member States relating to trade marks (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015).
Source: www.euipo.europa.eu
Aug 22, 2019 (Newsletter Issue 11/19)
Progress in Electronic Communication of Madrid Trademark Registration
According to the Trademark Office (TMO) of China National Intellectual Property Administration (CNIPA), China's self-developed electronic document-sending system for the post-registration formalities of the Madrid Trademark International Registrations is now comfortably transmitting during its first-month operation, having successfully delivered 124 documents to the World Intellectual Property Organization (WIPO) as of now. The IT system is another key milestone in electronic communication between China and the Madrid system since the online debut of the Madrid filing system on June 21, 2018.
Source: www.english.sipo.gov.cn
Aug 22, 2019 (Newsletter Issue 11/19)Practice Notices on Trademark Opposition IssuedOn June 17, 2019, the Canadian Intellectual Property Office (CIPO) has issued practice notices which provide guidance on current practices for trademark opposition proceedings and section 45 proceedings and the interpretation of relevant legislation.
The notices include the following topics:
- Navigating the Changes to Opposition and Section 45 Proceedings
- Practice in objection proceedings under section 11.13 of the Trademarks Act
- Practice in section 45 proceedings
- Practice in trademarks opposition proceedings
- Electronic evidence in opposition and section 45 proceedings
- Divisional applications in opposition
- Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations
- Practice notice on amendment and deletion of use, proposed use, and use and registration abroad Claims
For more information, please click hereSource: www.ic.gc.ca Aug 22, 2019 (Newsletter Issue 11/19)
Patent Office's Name Changed
On July 1, 2019, the Icelandic Patent Office – IPO, changed its name to the Icelandic Intellectual Property Office – ISIPO.
Source: www.patice.is
Aug 22, 2019 (Newsletter Issue 11/19)
Temporary Pre-Grant Protection for Industrial Designs
On June 27, 2019, amendments to Part IV of the Russian Civil Code entered into force, introducing a temporary, unregistered form of protection for industrial designs through an optional pre-grant publication of design applications.
According to the amendments, at the request of applicants, the Russian IPO will publish, in the Official Bulletin, information about industrial design applications that have passed formal examination. Temporary protection is granted from the application’s publication date. Previously, designs were published in the Official Bulletin only upon grant, after passing substantive examination.
The scope of temporary protection is limited to the essential design features as shown in the drawings in an application, but it cannot be broader than the set of essential features reflected in the drawings in the IPO’s grant decision. This means that if certain drawings or essential features are removed from the application at the stage of substantive examination, the applicant cannot claim damages for their unauthorized use within the frame of temporary protection.
Source: www.petosevic.com
Aug 22, 2019 (Newsletter Issue 11/19)
Criteria for Determining Well-Known Trademarks Issued
A resolution introducing the criteria for determining whether a trademark is well known entered into force in Uzbekistan on July 2, 2019.
According to the resolution, a well-known trademark must be recognized in relation to the goods/services for which it is registered by the relevant public sectors including:
- Actual and/or potential consumers in Uzbekistan; or
- Persons involved in the distribution of the goods/services bearing the trademark; or
- Business circles dealing with the type of goods/services to which the trademark applies.
Furthermore, in order to be recognized as well known:
- The relevant sectors of the public must be able to recognize a certain quality of goods or services in connection with the trademark;
- The trademark must have high inherent distinctiveness, or acquired distinctiveness resulting from its extensive use in Uzbekistan, including the use in domain names in the Uzbek country code top-level domain (ccTLD); and
- The trademark must have commercial value resulting from its continuous and extensive use.
Source: www.petosevic.com
Aug 07, 2019 (Newsletter Issue 10/19)VAT to Be Applied to Official FeesThe Egyptian Trademark and Industrial Designs Office has informed by official circular that all official fees will be subject to VAT (value added tax) of 14%. A copy of the circular is available here and has been put effect from July 4, 2019.
Source: JAH & Co. IP, Qatar Aug 07, 2019 (Newsletter Issue 10/19)Official Fees ReductionThe Trademark Office of United Arab Emirates has reduced the official fees for trademark registration and renewal with immediate effect and will be applied on new applications and retroactively on the pending applications.
In light of the above the trademark registration fees have been reduced from AED 10,000 to AED 6,700 with no change for filing and publication fees. Accordingly, the total official fees from filing up to registration for one trademark in one class will now be AED 8,700, rather than AED 12,000.
For renewals the total fees (including the renewal filing and publication fees) have been reduced from AED 12,000 to AED 8,700.
Additional to that, the official fees of AED 5,000 for filing an appeal against a rejection decision have been waived.
Source: JAH & Co. IP, Qatar Aug 07, 2019 (Newsletter Issue 10/19)Electronic Filing Mandatory SoonThe USPTO has published a new rule in the Federal Register requiring electronic filing for trademark submissions which becomes effective on October 5, 2019.
Trademark applicants and registrants will be required to file online using the USPTO's Trademark Electronic Application System (TEAS). Applicants and registrants will need to provide and maintain an accurate email address for receiving correspondence from the USPTO.
Paper and fax submissions will no longer be accepted. Email submissions will continue to not be accepted.
For more information, please click hereSource: www.uspto.go Aug 07, 2019 (Newsletter Issue 10/19)New Examination Guide on Specimen ExaminationThe USPTO published a new examination guide titled "Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens" which can be accessed here
This guide supplements existing guidance on examination of specimens to provide additional guidance regarding specimens that appear not to be in use in commerce because they are digitally created/altered or otherwise mocked up.Source: www.uspto.go Aug 07, 2019 (Newsletter Issue 10/19)Increase in Publication FeesThe Patent and Trademark Office in Yemen announced an increase in the official publication fees of trademark, patent, and industrial design applications. The new rates will apply to all applications filed on or after August 8, 2019. It should be noted that there are two stages of publication, one for opposition purposes after the acceptance and once after the registration is concluded.
Source: JAH & Co. IP, Qatar Aug 07, 2019 (Newsletter Issue 10/19)New Trade Mark Check LaunchedIPONZ announced the launch of the new software "Trade Mark Check" for searches of words and logos of the New Zealand register. The software has been developed for members of the general public who have limited awareness of intellectual property. They can check if a trademark, or another like it, is already registered in New Zealand.
The existing trademark search will continue to be available for more advanced searches and specialised use.Source: www.iponz.govt.nz Aug 07, 2019 (Newsletter Issue 10/19)New Malta Trademark ActIn Malta, Act XII of 2019 was enacted to transpose the provisions of Directive EU 2015/2436 and to substitute the old Trademarks Act (Cap 416 of the Laws of Malta). Act XII of 2019 came into force on May 14, 2019, and the New Trademarks Act is now Chapter 596 of the Laws of Malta.
The old Trademarks Act will continue to apply for pending trademark proceedings started under the old Act. All existing trademarks registered under the Old Trademarks Act shall be transferred under the new Trademark Register under the new regime of Chapter 596.
The following are some of the salient changes following the adoption of the new EU Directive and the Malta Trademarks Act:
- Representation of new types of trademarks such as sound, movement and olfactory marks
- Graphical representation requirement eliminated
- Grounds of refusal: Scope of the functionality exclusion expanded and wording “shape, or another characteristic” of a trademark introduced.
- Administrative opposition proceedings introduced
For more information, on the new opposition proceedings, please check the article of our Country Index Partner Mamo TCV Advocates from Malta.
Please note that the amendments have been included and the Maltese survey has been updated thanks to our contributor Mamo TCV Advocates, Malta. Aug 07, 2019 (Newsletter Issue 10/19)Geographical Indications to Be ImplementedThe President of the Russian Federation signed the draft of the law on amending the part four of the Civil Code of the Russian Federation and Articles 1 and 231 of the Federal Law on July 26, 2019, which referred to registration of the new type of IP rights such as geographical indication.
According to the daft of the law, geographical indication is a sign identifying a product as originating in the territory of a country or a region or an area, where specific quality, reputation or other characteristics thereof are essentially due to the geographical origin. The registration of geographical indications will be possible in a year, when subsidiary legislations regulating the registration and protection of the new type of the intellectual property rights are implemented along with the law.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jul 11, 2019 (Newsletter Issue 9/19)Renewal Fees Reduced On June 19, 2019, the China Trademark Office of CNIPA announced, that the official trademark renewal fees have been reduced. The changes became effective as of July 1, 2019.
The official fee for filing a trademark renewal application is now CNY 500. The official fee for application for recordal of change per class is reduced to CNY 150, and is nil if it is filed via electronic means and electonic issuing of documents is available.
Source: P. C. & Associates, China Jul 11, 2019 (Newsletter Issue 9/19)Foreign Applicants Need Local U.S. Agent SoonOn July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.
The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.
Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information.
This new trademark rule has an effective date of August 3, 2019. For a more information, please check here
Source: www.uspto.gov Jul 11, 2019 (Newsletter Issue 9/19)IP Office Accepts Division or Merger Requests of Intl. RegistrationsThe Office of New Zealand has withdrawn the notification made under Rule 40(6) of the Common Regulations, with effect as from March 21, 2019.
Consequently, as from that date, the Office of New Zealand can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Common Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Common Regulations.
This means that international trade mark owners are able to divide goods and/or services out of their International Registration into a divisional registration. In cases where the application is undergoing examination, this will allow acceptable goods and/or services to proceed to acceptance. This also allows trade mark owners to merge records that have previously been partially assigned or divided, back into a single International Registration.
For more details on New Zealand's current process for the division or merger of international trade mark registrations, please click here.Source: www.wipo.int Jul 11, 2019 (Newsletter Issue 9/19)Practice Paper on Examination of Figurative Trademarks PublishedThe Jordanian Industrial Property Protection Directorate under the Ministry of Industry, Trade and Supply (IPPD) has published a practice paper concerning the examination of absolute grounds for refusal as regards figurative trademarks with purely descriptive words/expressions.
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice is based, principles that will be generally applied by the IPPD and the IP offices who form part of the European Union Intellectual Property Network (EUIPN). It also aims to cover a majority of the cases.
The Paper is available in Arabic and English. It is divided into two parts; the first part summarises the criteria, while the second part provides a complete explanation of the different criteria applicable in each case.
The publication of the Paper has been a result of the joint efforts of the IPPD and EUIPO.Source: www.euipo.europa.eu Jul 11, 2019 (Newsletter Issue 9/19)
Sint Maarten Will Not Accept Division or Merger Requests of Intl. Registration
Sint Maarten (Dutch Part) has notified WIPO in accordance with Rules 27bis(6) and 27ter(2)(b) of the Common Regulations.
In the said notification, it is indicated that the law applicable in Sint Maarten does not provide for the division of registrations of a mark nor for the merger of registrations of a mark. As a result, the Office will not present to WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).
Source: www.wipo.int
Jul 11, 2019 (Newsletter Issue 9/19)
New Official Fees and Formalities Regulation
The new Portuguese Industrial Property Code came into force on July 1, 2019 and the Ministry of Justice and the Ministry of Finance adopted new official fees. All official fees have been adjusted in accordance with the inflation rate.
Further on July 4, 2019, the Portuguese INPI published its Decision no. 6142/2019 concerning the “Formal requirements and rules for applications and documents that regard the granting of industrial property rights”. This document contemplates implementing rules and technical requirements for applications of trademarks, utility models, designs and patents, etc. including the requirements for representation for the several types of trademarks foreseen (e.g. colour marks per se, sound marks, multimedia marks, movement marks and hologram marks).
Please note that the Portuguese Country Information has been updated with the amendments of the new Portuguese Industrial Property Code thanks to our contributor A. G. da Cunha Ferreira, Lda. from Portugal.
Source: www.sgcr.pt
Jul 11, 2019 (Newsletter Issue 9/19)Civil Code AmendedThe Federal Law No. 549-FL as of December 27, 2018 "On Amendments to the Part Four of the Civil Code of the Russian Federation" (on state registration of industrial designs) entered into force on June 26, 2019.
According to the Law, the main changes in the Civil Code are implementation of a publication of data on design application at the applicant's request and establishment of the temporary legal protection of an industrial design application. Thus, the temporary legal protection will be effective from the publication of data on industrial design application in the official bulletin of Rospatent till the date of publication of data on issuance of a patent. Meanwhile, it should be noted that the applicants will be able to claim compensation for the violation only after state registration of industrial design.
Previously, the legal protection of the industrial design was provided only after its official registration. Due to the fact that the registration process lasts 20.5 months, this method of protecting intellectual property rights was ineffective in the rapidly developing economy of the country.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jul 11, 2019 (Newsletter Issue 9/19)Accession to Madrid ProtocolWIPO has received Brazil’s accession document to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid System will enter into force for Brazil three months after the deposit of the accession instrument, on October 2, 2019.
For more Information, please click here Jun 20, 2019 (Newsletter Issue 8/19)Madrid E-Filing Service ImplementedThe Estonian Patent Office informs that trademark owners can now submit an international e-application under the Madrid Protocol, provided that they already have an Estonian national application or registration for the same trade mark. The application is submitted to the Estonian Patent Office, which will forward it to the World Intellectual Property Organization (WIPO) after the examination and, if necessary, correction of the application.
If an international application is filed, fees must be paid to WIPO (see Fee Calculator) and to the Estonian Patent Office (see trade mark fees).
To access the Madrid e-filing service, please click hereSource: www.epa.ee Jun 20, 2019 (Newsletter Issue 8/19)Official Fees IncreasedOn June 12, 2019, the Cabinet of Ministers signed and published Resolution No. 496, according to which the fees will be increased in 30 days as follows:
For trademark registration - four times;
For utility model registration - three times;
For registration of invention - two times.
Further, the Resolution provides a 20% discount on official fees for electronic filing of applications for registrations.
After July 12, 2019, the new official application fee is UAH 4,000 for each class. For colour trademarks there is an extra fee of UAH 1,000. Official fee for filing application in the names of several applicants is paid at the rate 130%.
The official fee for publication for each class is UAH 600. Additional fee for colour trademark publication is UAH 200.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jun 20, 2019 (Newsletter Issue 8/19)Increase of Official FeesThe National Industrial Property Office of the Dominican Republic has announced an increase in their official fees in relation to patents, designs, utility models and trademarks. The new fees were formally announced upon the publication of the March Official Gazette and entered into force as of May 2, 2019.
The new official fee for filing a trademark application is now DOP 5,445 for one class and DOP 4,111 for each additional class. The publication fee is DOP 2,300 for one class and DOP 1,150 for each additional class.
Source: Bermeo & Bermeo - Latin America IP, Ecuador Jun 20, 2019 (Newsletter Issue 8/19)New Trademarks Act in ForceThe Finnish Patent and Registration Office (PRH) informs that the new Finnish Trademarks Act entered into force on May 1, 2019. The most important changes can be seen below:
- Only online applications and renewals
- Specifying the list of goods and services of old registrations
- New administrative procedure for revocation and declaration of invalidity
- New online services
- Requirement for personal identity code
- The Trademark Gazette no longer publishes renewals and changes to registered Trademarks
For more information, please check the PRH’ website here and the article provided by the law firm Borenius Attorneys Ltd, Finland hereSource: www.prh.fi Jun 20, 2019 (Newsletter Issue 8/19)
Changes to Trademark Law
Amendments to the Tajik law on trademarks entered into force on January 2, 2019.
The Tajik IPO now publishes in its Official Gazette information on pending trademark applications that passed the formal examination, which is carried out within a month from the date of filing. Any interested party may then submit a written opposition against the pending application between the moment of publication in the Official Gazette and the substantive examination, which is usually carried out 11 or 12 months after the formal examination. Before the new law, the Tajik IPO only published information on registered trademarks, while written oppositions were not officially provided for in the law.
Trademarks will not be registered if they are identical or confusingly similar to, or contain elements that are identical or confusingly similar to:
- Religious symbols;
- Flag, emblem or other state symbols;
- Abbreviated or full names of international, intergovernmental organizations, their emblems, flags and other symbols;
- Official control and guarantee marks, hallmarks, seals, and other marks or insignia (these elements may be included with a trademark disclaimer, if the applicant has the consent of the authorized bodies)
- Industrial designs registered in Tajikistan before the priority date of the trademark in question.
The previous version of the law only stipulated that “generally accepted symbols and marks” could not be registered.
Finally, if a trademark registration expires and a renewal request has not been filed, the trademark will not be re-registered for a period of one year from the date of expiration in the name of a person other than the previous rights holder or legal successor (this period used to be three years).
Source: www.petosevic.com
Jun 20, 2019 (Newsletter Issue 8/19)
Trade Secrets Act Adopted
On April 20, 2019, the Trade Secrets Act entered into force in Slovenia, transposing the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) into Slovenian legislation.
Before the Act entered into force, trade secrets were regulated by the Companies Act and the Employment Relationships Act. Their subject matter was defined in broader terms, leaving room for various court interpretations.
Under the new act, a trade secret is defined as undisclosed expert knowledge, experience or business information that is not generally known or easily accessible, that has a certain market value and for which sufficient measures have been taken to keep it a secret.
Apart from defining trade secrets, the Act lays down the rules for their lawful and unlawful acquisition, use and disclosure, and the rules for maintaining their confidentiality in and after court proceedings. The Act also provides trade secret holders with a number of measures to be used in the event of trade secret misappropriation, including compensatory damages.
Source: www.petosevic.com
Jun 20, 2019 (Newsletter Issue 8/19)New Trade Secrets Act in ForceGermany has adopted a New Trade Secrets Act, which came into force on April 26, 2019. The Act implements the European Directive on the Protection of Trade Secrets (2016/943/EU) which aims to achieve a uniform level of protection for know-how and confidential information across Europe.
The most important changes are the following:
Stricter concept of trade secret protection:
Now trade secret holders will have to prove that the trade secrets had been subject to ‘reasonable steps’ to keep them secret and that the holder has a legitimate interest in keeping them secret.
Improved confidentiality protection in court proceedings:
The new Act introduces options to ensure that confidentiality is maintained in court cases.
Comprehensive set of rights to enforce trade secrets:
The new Act provides trade secrets holders with comprehensive rights to act against infringers.
For more information on organisational, technical and legal steps, please click hereSource: www.freshfields.com Jun 06, 2019 (Newsletter Issue 7/19)
New Online Services for Designs Launched
The Austrian Patent and Trademark Office has implemented a new online service for filing design applications electronically.
The new system is easy to access, including from mobile devices, and it provides guidance and tips for users through the different steps in the application. It can process standard and multiple designs as well as divisional design applications.
The Office is also the first intellectual property office to integrate DesignClass, the online tool for harmonised product indications, in its e-filing for designs.
Source: www.euipo.europa.eu
Jun 06, 2019 (Newsletter Issue 7/19)IP Office Will Not Accept Division or Merger of Request of Intl. RegistrationThe Government of India has notified the Director General of WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
As a result, the Office of India will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to Information Notice No. 46/2019Source: www.wipo.int Jun 06, 2019 (Newsletter Issue 7/19)Guidelines on Trademark Examination and Register Keeping PublishedOn May 17, 2019, the German Patent and Trade Mark Office published the guidelines for the examination of trademark applications and for keeping the register (Trade Mark Applications Guidelines).
The guidelines were brought into line with the legal situation resulting from the Trade Mark Law Modernisation Act with effect from May 1, 2019.
The guidelines (currently in German) is available hereSource: www.dpma.de Jun 06, 2019 (Newsletter Issue 7/19)
Accession to Nice Agreement
On March 25, 2019, WIPO notifies the deposit by the Government of Antigua and Barbuda of its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.
The Nice Agreement will enter into force, with respect to Antigua and Barbuda, on June 25, 2019.
Source: www.wipo.int
Jun 06, 2019 (Newsletter Issue 7/19)Mid-Term Declaration of Use ImplementedOn May 27, 2019, the Argentine National Institute of Industrial Property has issued Resolution Nº 123/2019 implementing the requirement of the Mid-Term Declaration of Use (MTDU) to maintain a valid trademark registration.
The MTDU must be filed for trademark registrations granted as of January 12, 2013 and registered for five (5) years. An official fee must be paid. The absence of an MTDU will presume that the trademark has not been used, unless evidence to the contrary is provided.
If the MTDU has not been filed between the fifth and sixth year of the registration of the trademark, an extraordinary official fee is payable for each year of delay in filing the MTDU. This applies to all the trademarks that, as of January 12, 2020, have not complied with the aforementioned obligation.
It should also be noted that if the MTDU is not filed in time, the application for renewal of these marks will only be processed after the MTDU has been filed and the corresponding extraordinary fee has been paid.
Source: O'Conor & Power, Argentina Jun 06, 2019 (Newsletter Issue 7/19)Final Countdown to New Trademarks ActThe long-awaited new trademark regime will come into force on June 17, 2019. The Canadian Intellectual Property Office (CIPO) is preparing and informing of a blackout period for CIPO’s online services from June 13, 2019 at 00:00 am EDT to June 17, 2019 at 06:00 am EDT to adjust to the amendments that will soon come into force.
As reported earlier, these amendments impact all aspects of trademark selection, filing procedures, oppositions, registration and enforcement. Some of the important changes are below:
- Expansion of non-traditional marks
- Declarations of use no longer be required at the time of application
- Goods and services must be classified according to the Nice Agreement
- Introduction of a class-based fee structure
- Priority claims can be asserted from any prior application
- Ability to divide applications and registrations
- Reduction of term of protection from 15 years to 10 years
- Accession to the Madrid Protocol
- The new distinctiveness examination criteria will apply to all pending applications
For more information, check the overview table, which shows the changes of the old and new trademark system. The overview table was provided by the Canadian law firm Benoît & Côté.Source: www.ic.gc.ca Jun 06, 2019 (Newsletter Issue 7/19)Brazil to Join Madrid ProtocolOn May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).
With Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles such as the backlog of applications, the language issue and the inability to accept applications in multiple trademark classes for a smooth integration into the Protocol requirements.
More information can be found hereSource: www.moellerip.com Jun 06, 2019 (Newsletter Issue 7/19)Trademark Law AmendedOn April 23, 2019, the Standing Committee of the National People's Congress, China's top legislature, approved revisions to eight laws, including the Trademark Law which will come into on November 1, 2019.
The amendment aims at combating bad faith application without actual intention to use, strengthening punishments on trademark infringement and raising the statutory damage from maximum 3 million yuan to maximum 5 million, curbing the number of bad faith applications or litigations by giving more responsibilities to Chinese trademark agencies, etc.
Traditionally, the pirated trademarks can be opposed when they are preliminarily approved and published and can be invalidated when they are registered. However, such procedures are slower and more costly for the opposition or invalidation applicants. The amended law gives the examiner more legal bases to combat bad faith bulk applications without intention to use in the early stage of examination so that the bad faith applications can be restricted more effectively and economically.
For further information, please check the article of our Country Index Gold partner P. C. & Associates, China here
Source: P. C. & Associates, China Apr 25, 2019 (Newsletter Issue 6/19)
Accession to WIPO Convention
WIPO notifies the deposit by the Government of Solomon Islands of its instrument of accession to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).
The said Convention will enter into force, with respect to Solomon Islands, on July 4, 2019.
Source: www.wipo.int
Apr 25, 2019 (Newsletter Issue 6/19)Trademark Act ChangedThe Estonian Parliament (Riigikogu) passed The Act on Amendments to the Trademark Act which entered into force on April 1, 2019. The Estonian trademark procedure is harmonised with the Directive (EU) No. 2015/2436.
The most important changes include:
- Acceleration of the trademark registration as the Patent Office no longer searches for the existence of similar rights (trademarks, trade names).
- Abolishing the requirement of graphical depiction of trade marks in the existing law
- Simplifying the protection of non-traditional trademarks, such as sound, multimedia and hologram marks, eliminating the examination for relative grounds for refusal during the registration of trade marks in the Patent Office
- Amending the structure of the Industrial Property Board of Appeal to ensure faster and more effective dispute resolutions
- Extending the competence of the Industrial Property Board of Appeal by transferring it from under the Ministry of Justice to under the Patent Office
Also, with effect from April 15, 2019, the Patent Office issues trademark certificates and industrial design certificates electronically only.
For further information, please check the article of our Country Index partner, Metida Law Firm here
Please note that the amendments have been included and the Estonian survey has been updated thanks to our contributor Patendibüroo TURVAJA OÜ, Estonia.Source: www.metida.com; www.ficpi.org; www.epa.ee Apr 25, 2019 (Newsletter Issue 6/19)Trade Secrets Act ImplementedThe implementation of the Trade Secrets Directive has been completed by the publication on February 21, 2019, of the Spanish Trade Secrets Act, which has entered into force mid-March.
The Trade Secrets Act does not completely re-work the existing fragmented civil law regime, but it does modify certain aspects. Key aspects are:
- New definition of "trade secrets" introduced
- The Act distinguishes between lawful and unlawful acts and includes provisions on "infringing goods".
- Rules on transfers, co-ownership and licences introduced
- It contains provisions on remedies (including more detailed provisions on damages) and preliminary injunctions.
- The Act completes and develops rules on confidentiality measures in the framework of court proceedings
- It governs certain procedural issues such as active locus standi and the limitation period
For more information, please click hereSource: www.cliffordchance.com Apr 25, 2019 (Newsletter Issue 6/19)
New Online Features Released
The Estonian Patent Office (EPA) has released enhanced features on its Back Office and Front Office systems for filing trademarks online.
The implementation went live on April 1, 2019, coinciding with the date when the amendments to the Directive harmonising trademark law in the EU Member States entered into force in Estonia.
Source: www.euipo.europa.eu
Apr 25, 2019 (Newsletter Issue 6/19)Amendments to Trademark Law in ForceOn March 16, 2019, the amendments to the Polish Industrial Property Law came into force adapting Directive 2015/2436, harmonizing the laws of the EU Member States regarding trademarks.
Some of the most important changes are the following:
- No graphical representation required
- Collective trademarks introduced
- Trademarks renewal procedure changed: It is enough to pay the fee for the next period of protection to renew the trademark.
- Licensee rights strengthened: Licensees can file a claim for trademark infringement with the proprietor’s consent, while the exclusive licensee will be entitled to bring an action if the trademark proprietor has failed to do so after having been asked by the licensee. Also, the licensee may intervene in proceedings initiated by the trademark proprietor to obtain compensation from the infringer.
- Evidence of genuine use of the trademark in court proceedings obligated
- Protection against preparatory actions introduced which relates to the use of packages or other things that contain a trademark, e.g. packaging, labels, tags, security or authenticity features or devices, or any other things to which a trademark is affixed.
- Liability of intermediaries for infringing trademark protection rights strengthened
- Protection of trademark during the transit of goods
For more information, please click hereSource: www.dlapiper.com; www.aippi.org Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationBelarus has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to here Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationGermany has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration Iceland has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationIreland has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration The Republic of Korea has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration Sweden has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to here Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration The Government United States of America has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration Viet Nam has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationAntigua and Barbuda has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationBahrain has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationBulgaria has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationChina has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe territorial entity of Curaçao has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationFrance has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationGeorgia has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationIndonesia has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationLiberia has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationMexico has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationSan Marino has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThailand has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationUkraine has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of New Zealand has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of New Zealand and do not apply in respect of the Contracting Party. As a result, New Zealand will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of Norway has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of Norway and do not apply in respect of the Contracting Party. As a result, Norway will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of Singapore has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of Singapore and do not apply in respect of the Contracting Party. As a result, Singapore will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019Notification under new Rule 40(6) of the Common RegulationsCuba has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification, new Rule 27ter(2)(a) of the Common Regulations is not compatible with the law of Cuba and does not apply in respect of Cuba. As a result, the Office of Cuba will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019 (Newsletter Issue 5/19)New Design Rights Bill for Cayman IslandsOn February 19, 2019, a new Design Rights Bill 2019 was published in the Cayman Islands, which will replace the current Design Rights Registration Law 2016 once it comes into force. It is not yet known when this will occur.
The existing legislation gives owners of original UK registered designs and registered European designs the opportunity to extend their rights to the Cayman Islands. When the Bill comes into force it will no longer be necessary to first register the design right in the United Kingdom.
In order to qualify for registrability under the terms of the new law, the design will need to be “original”. A design will be not deemed original if it is commonplace in the design field in question at the time of its creation. Examination will be limited to formalities.
For more information, please click hereSource: www.lysaght.co.uk Apr 04, 2019 (Newsletter Issue 5/19)Mediation for IP Disputes with Monetary Claims RequiredOn January 1, 2019, Article 5/A of the Turkish Commercial Code (TCC) came into force, thus mediation became a mandatory procedure for commercial disputes with monetary claims (i.e., payment of a debt or compensation) regardless of the amount in dispute.
Article 4 of the TCC includes disputes arising from intellectual property related matters among commercial disputes. Therefore, in principle, IP-related disputes shall also be subject to the mandatory mediation procedure provided that they involve a monetary claim (payment of a debt or compensation). Lawsuits for the nullity or cancellation of an IP right, or a mere request for the termination of infringement shall not be subject to mandatory mediation. Also, disputes such as oppositions to third party applications or to decisions of the Office are not subject to any mandatory mediation procedures.
For further information, please see the article from Mr Dogukan Berk Aksoy from Aksoy IP, Turkey, which can be accessed hereSource: www.aksoy-ip.com Apr 04, 2019 (Newsletter Issue 5/19)Accession to Madrid Protocol / Nice Agreement / Singapore TreatyWIPO presents his compliments and has the honor to notify the deposit by the Government of Canada, on March 17, 2019, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"), as amended on October 3, 2006, and on November 12, 2007. The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of Canada, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol will enter into force, with respect to Canada, on June 17, 2019.
Also, Canada joined the Nice Agreement and the Singapore Treaty which will enter into force on June 17, 2019.
For more information, please click on the respective links of the notices regarding the Madrid Protocol, Nice Agreement, and Singapore Treaty. Additional to that, the Canadian Intellectual Property Office provides a very good overview page of all the joined treaties which can be accessed hereSource: www.wipo.int Apr 04, 2019 (Newsletter Issue 5/19)New Industrial Property Code in Force SoonOn December 10, 2018, the Decreto-Lei nº 110/2018 was published in the Portuguese Diário da República, introducing the new Industrial Property Code (Código da Propriedade Industrial-CPI). The EU Directive 2015/2436 and the EU Directive 2016/943 are incorporated into national law. While the first Directive focusses on the harmonization between member states, the other Directive concerns the “know-how” and trade secrets protection.
The most relevant changes are the following:
- An administrative procedure has been introduced: The Portuguese Institute of Industrial Property (INPI) can declare registered trademarks and designs invalid in the first instance.
- In cases of trademark disputes elicited after publication of the trademark application by an opposition filed by a third party on the grounds of a previous registered trademark, the applicant can request the plaintiff to provide evidence of serious use of the trademark on which the opposition is based.
The new Industrial Property Code will come into force on the July 1, 2019. The rules regarding the protection of trade secrets protection came already into effect on January 1, 2019.
For further information, please click hereSource: www.abg-ip.com Apr 04, 2019 (Newsletter Issue 5/19)New Version of IP Online Search Tool LaunchedThe Intellectual Property Corporation of Malaysia (MyIPO) launched a new version of its IP Online system.
The "Advanced search" screen includes more than 30 different search fields. Compared to the previous version of IP Online, it includes a number of additional features, e.g. to narrow a search according to a specific legal status, a certain application type (national application, PCT application, utility model etc.) or even according to the date of the next payment of renewal fees. For dates, users can search with single days or date ranges. The search interface also includes a number of help functions for specific search fields, e.g. an integrated search tool for IPC or CPC classes or a function to search for a specific applicant. While IP Online is provided free of charge, registration is required to access some of the search functions.
The IP Online search tool can be accessed hereSource: www.epo.org Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationAustria has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, Austria has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019 (Newsletter Issue 5/19)Latest Edition of Trade Mark GuideThe UK Intellectual Property Office (IPO) informs about the latest edition of Trade Mark Guide.
IPO has produced a new Trade Mark Guide to improve shared understanding between trade mark experts and those undertaking or using trade mark research. Topics include:
- What is a trade mark?
- Trade mark data
- Nationality
- Trade mark classification
- Trade mark quality
- The value of a trade mark
For more information, please click hereSource: www.gov.uk Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationBenelux has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationThe Czech Republic has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationEstonia has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationGreece has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationHungary has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationPoland has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationRomania has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationRussia has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationSpain has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationTunisia has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Mar 21, 2019 (Newsletter Issue 4/19)Official Fees 50% IncreasedOn March 4, 2019, the Pakistani Ministry of Commerce and Textile (Commerce Division) has promulgated an official notification advising of the Federal Government directive an increase of 50% in official fees for all IP related matters amending the Trade Marks Rules of 2004. The said increase is effective as of March 9, 2019, for Trademark and Patent matters whereas for copyrights the revised fees is effective as of March 14, 2019.
The new official fee for filing a trademark application is PKR 3,000 for one class and PKR 3,000 for each additional class. The official registration fee is PKR 9,000. There is no publication fees.
To access the notification, please click here
Source: JAH & Co. IP, Qatar and Bharucha & Co., Pakistan Mar 21, 2019 (Newsletter Issue 4/19)
Accession to Lisbon Agreement
On February 8, 2019, WIPO notified the accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979 ("Lisbon Agreement") by Albania.
The said Agreement will enter into force, with respect to the Republic of Albania, on May 8, 2019.
Source: www.wipo.int
Mar 21, 2019 (Newsletter Issue 4/19)Appeals to be Filed Before Court NowThe Sudanese Trademark Office issued a jurisdictional update that the committee of appeal attached to the Trademark Office has been dissolved and that the implementation stipulated by Article 16 (2) of the Sudanese IP Law No. 8 of 1969 will be enforced from now on.
Article 16 (2) of the Sudanese IP Law states that any refusal by the Registrar to register a mark or any condition, amendment, modification or limitation imposed by him shall be subject to appeal to the Court.
Thus, it is now mandatory to file an appeal before the Court through a lawyer for any refusal by the Registrar. The said regulations will also be applicable to international registrations filed through the Madrid System. It will be applied retroactively for any trademarks currently under appeal with the Trademark Office and not yet processed by the Dissolved Committee of Appeal. They will be summarily rejected and new appeals will have to be brought before the competent courts of that jurisdiction.
Source: JAH & Co. IP, Qatar Mar 21, 2019 (Newsletter Issue 4/19)Update of Practice Guidelines & Introduction of Request for Review ProcessOn February 28, 2019, IPONZ informed that it has updated its practice guidelines relating to Section 32(1) of the Trade Marks Act 2002, which concerns how a trademark application is made, and refers to the ownership of the trademark.
The update clarifies that if an application is made by a person who cannot claim ownership of that trademark (for example, a nominee company), then that trademark may be left vulnerable to opposition or invalidity proceedings.
While opposition or invalidity proceedings may be possible, IPONZ will not investigate an applicant’s right to ownership at examination, except in situations where it is apparent that the ownership of the trademark is at issue.
For more information, please check '2. Filing a trade mark application'
Further, IPONZ has introduced a request for review process for trademark applications. By this applicants or agents can now request for a more senior member of the examination team of the Office to review the examination of an application. The request can be made under certain circumstances which can be seen hereSource: www.iponz.govt.nz Mar 21, 2019 (Newsletter Issue 4/19)
New Trademark Law in Force Now
A new Law on Trademarks entered into force on February 15, 2019. The new law aims to transpose EU Directive 2015/2436 into national legislation and provides basis for further implementation of Directive 2004/48/EC.
The most significant changes introduced by the new law are the following:
- The graphical representation requirement has been abolished, opening way for the registration of new types of trademarks, including position, pattern, motion and multimedia marks.
- An appropriate legal frame has been established for the protection of geographical indications, designations of origin, traditional specialities guaranteed and traditional terms for wine by introducing the corresponding absolute grounds for refusal of trademark registrations.
- Detailed rules related to the registration and protection of collective and guarantee trademarks have been established.
- When filing a trademark application, it is required to precisely define the list of goods and services for which protection is sought in such a way that enables the competent authorities to determine the extent of the protection sought on that sole basis.
- Appropriate legal protection is assured for right holders in relation to counterfeit goods in transit through EU territory – trademark owners can prevent all third parties from bringing goods into the EU, even if the goods are only in transit, if such goods, including the packaging, come from non-EU countries and bear an identical or similar mark.
- Trademark holders are entitled to prohibit affixing signs, identical with or similar to their trademark, on packaging and placing that packaging on the market.
Please note that the amendments have been included and the Croatian survey has been updated thanks to the contributor PETOŠEVIĆ and the law firm Furcic, both from Croatia.
Source: www.petosevic.com
Mar 21, 2019 (Newsletter Issue 4/19)
Drafts Amendments to Industrial Property Act
The Slovenian Ministry of Economic Development and Technology, in cooperation with the Slovenian Intellectual Property Office, prepared a draft Act amending the Industrial Property Act in order to transpose the provisions of the Directive (EU) 2015/2436 into national legislation.
The amendments relate to trademarks only and the most important include the following:
- The scope of absolute grounds for refusal has been expanded;
- Relative grounds have been supplemented, amended or defined in a more precise and clear manner;
- Non-use defense has been introduced in opposition proceedings and annulment and infringement actions.
The draft was available for public consultation from January 21 to February 20, 2019. The Slovenian Association of Representatives for Intellectual Property provided the Ministry with comments and proposed amendments to the text. Once the Ministry prepares the final version of the proposed draft, it will enter the parliamentary procedure.
Source: www.petosevic.com
Mar 21, 2019 (Newsletter Issue 4/19)Official Trademark Filing Fees ReducedOn March 7, 2019, the Saudi Minister of Commerce and Investment has promulgated a Ministerial Decision reducing the official fees for filing, registration, search and renewal of trademarks whereas increasing official fees for trademark assignment recordation and amendment of the form of registered trademarks. The decision will be effective upon publication in the Official Gazette.
The new official fee for filing a trademark application will be SAR 200 (paper and electronically) instead of SAR 1,000. The e-publication fee is SAR 3,000 for foreign companies and SAR 1,500 for local companies stays the same, and the registration fee will be SAR 3,500 instead of SAR 5,000.
A copy of the Ministerial Decision along with the list of new fees and its English translation is available here
Source: JAH & Co. IP, Qatar Mar 21, 2019 (Newsletter Issue 4/19)
Industrial Property Institute Moved
The Kenyan Industrial Property Institute (KIPI) has moved in December 2018.
The new address is the following:
KIPI Centre
Kabarsiran Avenue
Off Waiyaki Way
Lavington, Nairobi
Source: www.omlaw.co.ke
Mar 21, 2019 (Newsletter Issue 4/19)
IP Office Will Not Accept Division or Merger Requests of Intl. Registrations
The Belarusian Intellectual Property Office (IPO)has recently notified WIPO that it will not accept applications for divisions or mergers of International trademark registrations, because Blearusion trademark legislation does not provides for the division or subsequent merger of registrations.
Namely, new Rules 27bis, 27ter and 40(6) of the Common Regulations under the Madrid Agreement entered into force on February 1, 2019, introducing the possibility for international registration holders to request the division and merger of international trademark registrations. According to the amendments, requests for division must be filed with the local IPO, and not directly with WIPO. The local IPO may examine the request to ensure that it meets the requirements in the applicable national or regional law before notifying the International Bureau of WIPO. However, contracting states are entitled to notify WIPO that they will not present division requests to WIPO if their local legislation does not provide for the division of trademark applications.
Source: www.petosevic.com
Feb 28, 2019 (Newsletter Issue 3/19)Designs Examination Practice Guide UpdatedThe UK Intellectual Property Office (IPO) informs that the Registered Designs Examination Practice guide has been updated with regard to Part F: Locarno classification (Paragraph 15.05).
This guide provides information on how design applications are examined in respect of national applications filed at the UK Intellectual Property Office.
For further information, please click hereSource: www.gov.uk Feb 28, 2019 (Newsletter Issue 3/19)
Important Changes to IP Legislation
The resolution "On measures to improve state administration in the field of intellectual property" came into force on February 8, 2019.
Some important changes are below:
- The Intellectual Property Agency will be transferred to the Justice Ministry.
- The Ministry of Justice and the Prosecutor General’s Office has to conduct a complete inventory of trademarks registered in Uzbekistan until July 1, 2019.
- As of March 1, 2019, all trademarks applications are subject to mandatory publication in the UzPTO’s online database.
- Written comments on bad faith of applications for registration can now be submitted to the Agency.
- Exclusive rights to trademarks and service marks arise from the date of their registration in the State Register of Trademarks with the obligatory placement of information on registration sign on the official website of the Agency.
- The period during which a trademark certificate can be terminated on grounds of non-use is reduced from five to the last three years, as well as in violation of the collective mark use agreement.
Source: www.uzdaily.com, www.legalmaxlaw.com
Feb 28, 2019 (Newsletter Issue 3/19)
New Labelling Requirements for 54 Types
A decree introduces new labelling requirements for 54 types of imported and locally manufactured goods, including alcoholic and non-alcoholic beverages, cigarettes, gasoline, medicines, fertilizers, perfumes and cosmetics on November 30, 2018.
The new regulation introduces labelling with special markers or tangents used for authentication of products to improve IP rights protection.
The decree will enter into force on August 1, 2019 and will be determined by separate regulations.
Source: www.petosevic.com
Feb 28, 2019 (Newsletter Issue 3/19)E-Filing of Geographical IndicationsOn February 21, 2019, the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has made available the electronic system for Geographical Indications (GIs). This was approved by Resolution No. 233 of January 18, 2019. Filings of GIs on paper are now not possible anymore.
The system can be accessed by using the same login and password registered in the system of the Union Collection Form (GRU). When requesting the service, the user will need a GRU number, which must be paid before starting the process.
For more information, please click hereSource: www.inpi.gov.br Feb 28, 2019 (Newsletter Issue 3/19)Official Gazette of One Registry PublishedThe Ministry of Industry and Trade in Aden has issued Gazette Issues No. 3 and 4 on January 31, 2019, publishing a number of Ministerial Decisions including trademarks applications. The Gazette can be accessed here (local language).
The non-extendable deadline to file an opposition against the trademarks published in this current Gazette issue will be due on April 30, 2019.
Please be reminded that the Trademark Office in Aden works independently from the Trademark Office in Sana’a.
Source: JAH & Co. IP, Qatar
Feb 28, 2019 (Newsletter Issue 3/19)Requirement of U.S. Attorney for Foreign TM Applicants ProposedThe United States Patent and Trademark Office (USPTO) published a proposal to change federal trademark law to require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to use an attorney who is licensed to practice law in the United States (see here).
The requirement applies to trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States. The proposed changes would require these applicants, registrants, and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO.
In addition to the above proposed change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to confirm that they are an active member in good standing of their bar and provide their bar membership information.
Any U.S.-licensed attorney who has an active bar membership and is in good standing, regardless of where the attorney resides (including outside the United States), can continue to represent foreign and domestic trademark applicants and registrants at the USPTO.
The USPTO is taking comments from the public on this proposed rule until March 18, 2019. Comments can be forwarded to TMFeedback@uspto.gov. Feb 28, 2019 (Newsletter Issue 3/19)New Participant of Madrid Goods and Services ManagerThe Georgian IP Office (Sakpatenti) and WIPO have been collaborating since the beginning of 2019 and Sakpatenti has become a new participant of the Madrid Goods and Services (MGS) Manager.
Applicants can now use the MGS Manager to translate goods and services lists into Georgian and Georgian trademark holders can simply check the acceptability of terms listed in their application across 35 contracting parties to the Madrid Protocol.
For more information, please check here Feb 28, 2019 (Newsletter Issue 3/19)Equivalent UK Marks after BrexitThe UK Intellectual Property Office (IPO) informs that the Office will create equivalent UK trademarks for all registered European Union Trade Marks (EUTMs) after Brexit.
These equivalent UK rights will be recorded on the UK register and retain the filing dates recorded against the corresponding EUTM. They will also inherit any priority and/or seniority dates. The Office informs that these trademarks will be fully independent UK trademarks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
The number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009 in order to identify comparable UK rights and distinguish them from existing UK trademarks.
The following examples show how comparable UK trademarks will be numbered:
000000977 (existing EUTMs) will be UK00900000977 (comparable UK trademark)
For further information, please check here
Also, check our earlier update on 'Protection of EU Trademarks and Designs when No Brexit Deal'.Source: www.gov.uk Feb 28, 2019 (Newsletter Issue 3/19)Trademark Examination Guidelines AmendedThe Korean Intellectual Property Office (KIPO) amended its trademark examination guidelines, effective as of January 1, 2019. The major amendments are summarized below.
- Stricter examination of non-owner marks on famous characters and character names
- No registrations for “buzzword” terms such as ‘K-POP’
- New restrictions on individuals applying for franchise marks in their own names
- Marks comprising a famous geographical name and ‘University’ can be distinctive
For further information, please check hereSource: www.kimchang.com Feb 28, 2019 (Newsletter Issue 3/19)IP Laws AmendedIP Australia informs that intellectual legislation improvements came into effect on February 24, 2019.
The improvements include for example:
- streamline application processes and payment of fees
- change the period, that must elapse before actions of non-use of a mark can be taken, from from five years to three years
- improve Plant Breeder’s Rights enforcement measures and introduce changes in essentially derived variety declarations.
These changes are part of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 which can be accessed here
For further information, please check hereSource: www.ipaustralia.gov.au Feb 14, 2019 (Newsletter Issue 2/19)Set to Implement EU Trademark Reform PackageThe Italian government’s Council of Ministers of November 20, 2018, approved two legislative decrees concerning intellectual property rights that finalise the implementation into national law of the so-called EU Trademark reform package, of EU provisions on the unitary patent and of the Unified Patent Court Agreement.
Both decrees will come into force after publication in the Italian Official Journal, expected to occur in early 2019.
The first decree concerns the implementation into national law of EU Trademark Directive No. 2015/2436 as well as of the EU Trademark Regulation No. 2015/2424, now consolidated into EU Trademark Regulation No. 2017/1001.
Some important changes will be:
- abolition of the graphic representation requirement for trademarks
- certification trademarks introduced
- absolute grounds for refusal of trademark registration apply in case of conflict with denominations of origin and geographical indications
- opposition procedure of new trademark applications extended in which the opponent’s prior mark enjoys a reputation, or it is a well-known mark
- exclusive right of the trademark holder is extended
- seizure of counterfeit goods in mere transit
- actions before the Italian Patent and Trademark Office for nullity or revocation of trademark registrations as of January 2023.
For more information, please check the article of the law firm Società Italiana Brevetti from Italy.Source: www.sib.it Feb 14, 2019 (Newsletter Issue 2/19)
Trademark Act Changed
On January 1, 2019, a new Danish Trademarks Act came into force. The new Act introduces a number of important amendments. Some of the changes can be seen below:
- Requirement for representation by graphic means is deleted
- Fee structure changed
- Fast-track scheme and detailed search report on prior rights available
- Renewal: As of January 1, 2019, a trademark registration is valid for 10 years from the date of application.
- Establishment of use-based trademark rights
- Trademark protection - goods in transit and preparatory acts
- Specification when company names can prevent registration and use of a trademark
Please note that the amendments have been included and the Danish survey has been updated thanks to the contributor Gorrissen Federspiel Advokatpartnerselskab.
Source: www.dkpto.dk
Feb 14, 2019 (Newsletter Issue 2/19)
Requirement for Cryptocurrency for Foreign Applicants
The Venezuelan Patent and Trademark Office has issued an Official Notice establishing that official fees relating to trademarks and patents on behalf of foreign applicants must be paid in “Petro” cryptocurrency.
The official notice also establishes a 60-day term for payment of official fees for trademark applications granted in Official Bulletins 580 through 590.
Source: www.hpcd.com
Feb 14, 2019 (Newsletter Issue 2/19)Important Amendments to Trademark ActThe Austrian Trademark Act (MSchG) has been amended, following the implementation of several new provisions of Austrian legislation in 2017. The changes of the EU Trademark Directive 2015/2436 have been implemented into law and entered into force on January 14, 2019.
Important changes are the following:
- Requirement of graphic representability of signs abolished
- Protection against product piracy possible
- Procedural fees reduced: Online incentives available now also for patent, design and international trademark applications. Significantly reduction of fees for applications before the Nullity Division of the Patent Office and of fees for application for cancellation of trademarks
- E-filing of new types of trademark such as multimedia and motion marks
Further changes affect the examination procedure:
- An opposition can now also be based on nationally and internationally well-known trademarks or designations of origin and geographical indications.
- An opposition may also be based on several trademarks provided that they belong to the same proprietor.
- In cancellation proceedings it is possible to base a cancellation request on a trademark application; if the trademark is registered before the cancellation decision (Sec. 30 para 2a MSchG).
- New relative grounds for cancellation are available. Among others, persons who are entitled to injunction claims against the use of the trademark under the Copyright Act (Sec. 32b MSchG) or the Design Protection Act (Sec. 32c MSchG) may also apply for cancellation of the trademark.
For more information, please check the article of Wolf Theiss here
Please note that the amendments have been included and the Austrian chapter (survey/licensing) has been updated thanks to our contributor Maybach Görg Lenneis & Partner from Austria.Source: www.wolftheiss.com; www.patentamt.at Feb 14, 2019 (Newsletter Issue 2/19)
Fast Track Filing Procedure Soon
Starting from February 26, 2019, it will be possible to file Italian trademarks in fast track procedure and thus obtain the publication in the bulletin within 7 days of filing.
To use the fast track procedure, applications must be filed online and the following conditions must be met:
- absence of priority claims
- goods/services must be included in the Nice Classification in force at the time of filing
- mark must be "individual"
- mark must be figurative or verbal (i.e. not a shape mark)
Source: www.rapisardi.com
Feb 14, 2019 (Newsletter Issue 2/19)
New Scope of Court Jurisdictions in IP
The State Intellectual Property Office informs that the new Act on Areas and Seats of Courts (Official Gazette 67/18) which provides for important amendments to court jurisdiction in the proceedings for the protection of intellectual property rights came into effect on January 1, 2019.
The Municipal Criminal Court in Zagreb shall obtain exclusive jurisdiction in proceeding with all cases concerning criminal law protection of intellectual property (offences as referred to in Title 27 of the Criminal Code), and the Municipal Misdemeanour Court in Zagreb in proceeding with all misdemeanour cases in the field of intellectual property protection. Second degree criminal procedures fall under jurisdiction of county courts, and second degree misdemeanour procedures fall under jurisdiction of the High Misdemeanour Court of the Republic of Croatia.
Municipal State Attorney's Office in Zagreb has substantive and territorial jurisdiction over cases concerning criminal law protection of intellectual property, pursuant to the provisions of the State Attorney’s Office Act (Official Gazette 67/18).
Source: www.dziv.hr
Feb 14, 2019 (Newsletter Issue 2/19)Important Amendments to Trademark LawAs of January 1, 2019, the Act XI of 1997 on the protection of trademarks and geographical indications has been modified through Act LXVII of 2018 on the amendment of certain acts on industrial property right protection.
Through the amendments, the legislator primarily intended to fulfil its legal harmonization obligations arising from Directive 2015/2436.
Some important changes are seen below:
- Abandonment of graphical representation requirement
- More detailed list of absolute grounds for refusal
- Previously terminated trademarks do not form an obstacle to registration of identical new trademarks any longer (formerly, third parties were not entitled to registering a trademark identical to one that lapsed within the 2 preceding years)
- Scope of trademark protection has been further specified and supplemented on prior rights
- New manners of defence in trademark infringement law suits
For more information, please check the article of our contributor Tivadar Law Firm from Hungary.
Please note that the Hungarian survey has been updated thanks to our contributors SBGK Attorneys at Law and Patent Attorneys and Tivadar Law Firm, both from Hungary. Feb 14, 2019 (Newsletter Issue 2/19)Madrid E-Filing Service InstalledThe State Patent Bureau of the Republic of Lithuania informed that international trademark applications under the Madrid Protocol can now be filed electronically as of February 1, 2019.
Further, the system makes it possible to translate the goods and services into English and check their compliance with the requirements of the Nice Classification.
To access the Madrid e-filing service, please click hereSource: vpb.lrv.lt Feb 14, 2019 (Newsletter Issue 2/19)Official Fee Increase and New Fee StructureOn January 1, 2019, a new fee structure for trademark-related services entered into force in Hungary as part of a broader set of amendments introduced by Act LXVII, primarily intended to transpose the Directive (EU) 2015/2436 into national legislation.
Official fees have been lowered for services related to trademarks registered in one class only, but have increased for trademarks registered in two or more classes.
The new official fee for filing a trademark application is EUR 202 for the first class, EUR 270 for the second, EUR 371 for the third and EUR 506 for the fourth class. Each additional class over 4 classes is EUR 135.
Filing fees and renewal fees are the same. However, the new renewal fees are to be applied to trademarks with expiration dates after June 30, 2019; for trademarks expiring before that date, previous fees will be applied.
While there was previously a grace period of six months from the trademark expiration date, during which no fees were charged for late renewal, the grace period has now been abolished and the late renewal of trademarks expiring after June 30, 2019, will be subject to an official fee of EUR 101.
Additionally, while trademark renewal requests could previously be filed 12 months before the trademark’s expiration, the earliest they can now be filed is six months before they expire.
For more information on this and on new renewal fees, please check hereSource: www.petosevic.com Feb 14, 2019 (Newsletter Issue 2/19)Change of Name to North MacedoniaOn January 25, 2019, the Greek Parliament ratified the Prespes agreement between Macedonia and Greece, ending the nearly three-decade long dispute between the two countries over the name “Macedonia”.
The official constitutional name of the Republic of Macedonia will change to “Republic of North Macedonia”, while the country’s short name will be “North Macedonia”.
The agreement regulates the change of the country code and will impact the area of intellectual property once the new name takes effect.
For more information on this and on new renewal fees, please check hereSource: www.petosevic.com Feb 14, 2019 (Newsletter Issue 2/19)
First Non-traditional Trademarks Granted
The Industrial Property Mexican Institute (IMPI) has delivered the first non-traditional trademarks registration certificates within the scope of olfactory marks, sound and commercial image since the amended Mexican Industrial Property Statute entered into force.
The registration certificates have been granted to the following applicants:
- Olfactory mark to Sureste Sustentable S.A. de C.V. for a bamboo-smelling paint
- Trademark of commercial image to Germán Flores, designer, for a decorative pot of three pieces in the form of figurine
- Smell mark to Hasbro, Inc. for a toy modelling dough that smells of a combination of sweet with a vanilla-dyed fragrance, cherry and the natural scent of dough based on wheat flour
- Sound mark to Grupo Gran Café de la Parroquia de Veracruz S.A.P.I. de C.V. for the sound that evokes images and memories: a spoon that strikes three times the glass of the coffee
Source: www.twobirds.com; www.gob.mx
Jan 31, 2019 (Newsletter Issue 1/19)Official Gazette of One Registry PublishedThe Ministry of Industry and Trade in Aden has issued Gazette Issues No. 1 and 2 for July/August 2018 on December 13, 2018, publishing a number of Ministerial Decisions including trademarks applications. The Gazette can be accessed here (local language).
The non-extendable deadline to file an opposition against the trademarks published in this current Gazette issue will be due on March 12, 2019.
Source: JAH & Co. IP, Qatar Jan 31, 2019 (Newsletter Issue 1/19)German Trademark Law ChangedThe German Patent and Trade Mark Office (DPMA) informed that the Trade Mark Law Modernization Act (MaMoG) entered into force on January 14, 2019. The Act contains revisions whose aim is to mainly transfer the provisions of EU Trade Mark Directive 2015/2436 of 16 December 2015 into German law. Most changes will have an immediate effect, while the changes regarding cancellation proceedings, renamed “revocation or invalidity proceedings” will be effective as of May 1, 2020.
Important changes are the following:
- Requirement of graphical representation of trademarks abandoned
- Certification marks introduced
- New absolute grounds for refusal (Geographical Indications, Designations of Origin, Plant Variety Rights, Traditional Terms for wine and specialities)
- Term of protection and Renewal due date changed
- Reclassification abolished
- Various changes in opposition proceedings
- Registrability of Licenses
- Cancellation proceedings renamed revocation or invalidity proceedings
For more information, please check the DPMA's website and the article of our Country Index partner JONAS Law Firm from Germany
Please note that the amendments have been included and the German survey has been updated thanks to our contributors Klinger & Kollegen and Heissner & Struck Rechtsanwälte, Germany.Source: www.dpma.de Jan 31, 2019 (Newsletter Issue 1/19)New Trademark Legislation EffectiveThe Swedish Patent and Registration Office (PRV) informed of several important changes to the trademark law and related constitutions that came into effect as of January 1, 2019.
The most important changes include:
- Graphical representation requirement for trademark registration abandoned
- Changes to opposition proceedings are being implemented; for example, a due date for settlement of objections, requirements of use as a basis for revocation, and that decisions on revocation applies retroactively.
- The date of application will only be allocated by the Swedish Patent and Registration Office (PRV), if certain criteria are met, such as clear intent of registration, name of the applicant, clear representation of the trademark and a list of goods and services should be included in the application.
- As of January 1, 2019, a trademark registration is valid for 10 years from the date of application.
- Trademark registrations that are due for renewal after January 1, 2019, can be renewed at the earliest 6 months before and at the latest 6 months after the expiration date.
- Protection of goods in transit extended
- New law on Company Names replaces the existing Trade Names Act of 1974 (key point: a trademark owner may hinder the registration for a company name and vice versa)
For more information, please check the PRV's website
Further sources: Groth & Co KB and www.awa.com
Please note that the amendments have been included and the Swedish survey has been updated thanks to our contributor Groth & Co KB, Sweden.Source: www.prv.se, www.groth.eu Jan 31, 2019 (Newsletter Issue 1/19)Upcoming Changes to Trademark LawsThe Benelux Office for Intellectual Property (BOIP) informs that the laws on trademarks in the Benelux will change as of March 1,2019.
One of the changes concerns the collective mark, which will be replaced by two variants as of March 1, 2019 (the "new-style" collective mark and certification marks). Owners of collective marks filed before March 1, 2019, need to notify the authorities of their choice for one of these variants as a premise for the next renewal. Respective trademark owners have been notified by BOIP.
The differences of at a glance:
New-style collective mark
- Serves to inform that the products or services are provided by a business that is a member of a given organization
- Owner must be an association or a legal entity under public law
- Can indicate a geographical origin
Certification mark
- Serves to inform that the products or services meet certain requirements
- Owner is not allowed to market the products and services himself
- Cannot certify geographical origin
For more information, please check the BOIP's websiteSource: www.boip.int Jan 31, 2019 (Newsletter Issue 1/19)New Regulations for TM Registration in ForceThe Lithuanian PTO informed that new Regulations for the registration of trademarks were adopted on January 24, 2019. These Regulations implement the new version of the Law on Trademarks, which came into force on January 1, 2019.
The new version of the Regulations implements the EU Directive 2015/2436 and aims at making the registration and protection system of trademarks more accessible and efficient.
Changes are the following:
- Update of electronic application filing system
- New fees
- Registration of new types of marks made possible
- Application process reduced to three stages (filing, payment, submission)
- Certification marks introduced
- Fast-track examination now possible
- Import of Nice Classification headers abolished
For more information, please check the PTO's website and the article of the law firm AAA Law here
Please note that the amendments have been included and the Lithuanian survey has been updated thanks to our contributor AAA Law, Lithuania. Jan 31, 2019 (Newsletter Issue 1/19)
Important Amendments to Trademark Law
As of January 1, 2019, new and significant amendments in the Czech trademark law came into force. Some of the amendments are below:
- The local Patent Office will not check for earlier identical trademarks when examining new applications.
- The owners of such rights will have an opportunity to file oppositions in order to protect its registered signs.
- The graphical representation requirement of a trademark has been abandoned. Trademarks can be expressed in any form capable of reproduction, provided it allows for a clear and precise determination of the subject of the trademark protection.
- New claims arising from IP rights ownership (unauthorized use of registered trademarks in the names of corporations and in comparative advertising expressly recognized as trademark infringement)
Source: www.kinstellar.com
Jan 31, 2019 (Newsletter Issue 1/19)
Trademark Law Amended
The Irish Patents Office informed that the amendments of the Irish Trade Mark Law, implementing the EU Directive 2015/2436, came into force as of January 14, 2019. It removes the graphical representation requirement for a trademark to be registrable.
Some other changes can be seen below:
Absolute grounds from opposition porceedings
Oppositions can now only be based on relative grounds
Additional absolute grounds
The list of signs excluded from registration has been extended.
Also, trademarks will be refused registration if their use is prohibited by any enactment or provision that safeguards Protected Designations of Origin (PDOs), Protected Geographical Indications (PGIs), traditional terms for wine and traditional specialties guaranteed, and prior plant varieties.
Goods in transit
Infringing/counterfeit goods which are “in transit” but not intended for free circulation in Ireland can be detained by Customs.
Division of registrations
Possibility to divide a registered trade mark into two or more separate registrations.
Expansion of anti-counterfeiting measures including preparatory acts
A wider range of counterfeiting activities will now be considered to be acts of trademark infringement.
Licensing
A non-exclusive licensee may bring proceedings for infringement of the trademark only with the consent of the proprietor. However, the holder of an exclusive licence may bring infringement proceedings if the proprietor of the trade mark, after formal notice, does not bring infringement proceedings within an appropriate period.
A licensee will now have a right to intervene in infringement proceedings brought by the proprietor of the trade mark in order to seek compensation/damages.
Please note that the amendments have been included and the Irish survey has been updated thanks to our contributor Tomkins & Co, Irland.
Source: www.patentsoffice.ie, www.frkelly.com, www.marques.org
Jan 31, 2019 (Newsletter Issue 1/19)Notification on Common Regulations on Division/Merger of International RegistrationsThe Government of Slovakia has notified WIPO with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which will enter into force on February 1, 2019.
Slovakia has declared that new Rule 27ter(2)(a) of the Common Regulations will not apply in Slovakia. As a result, its Office will not present to WIPO requests for the merger of international registrations resulting from division under this new Rule.
More information on the notification is available here Jan 31, 2019 (Newsletter Issue 1/19)Trademark Law EnactedOn January 31, 2019, President U Win Myint signed the Myanmar Trademark Law, approving the most anticipated piece of legislation in the country this year. The law includes 106 sections to regulate national and international protection of trademarks. The law includes the following:
- Introduction of the first-to-file framework to align with the international standards
- Term of protection is 10 years as from the date of application
- Renewable every 10 years for further 10-year periods as of section (34) of the Trademark Law
Registered trademarks recorded under current practice at the Office of the Sub-Registrar of Deeds and Assurance shall be re-registered in accordance with the provisions of the new law. Therefore, trademark owners need to re-apply their mark to gain protection under the new legislation.
The Trademark Bill is silent on whether there is a transitional period during which registered marks under the current practice remain valid for the preparation of re-application or whether there is a special examination procedure for such marks.
For more information, please click hereSource: www.bizlawmyanmar.com Jan 31, 2019 (Newsletter Issue 1/19)Trademark Practice Guidelines UpdatedOn February 1, 2019, IPONZ informs that they have updated the trademark practice guidelines to reflect the following:
Interpretation of “featuring” term in trade mark specifications
IPONZ will now treat the term “featuring” in specifications for goods and services as being a non-limiting term having the same meaning as the term “including”.
The updated interpretation appears under the Annexure General and Relative Grounds guidelines and confirms IPONZ’s interpretation of the term “featuring” for classification and citation purposes.
The practice will come into effect for National Trade Marks filed on or after February 1, 2019, and international registrations with a designation date on or after February 1, 2019. This will not retroactively affect applications filed before this date.
Change to division process for national trademark cases
IPONZ divides a trademark application for the purposes of overcoming an objection:
- The original (parent) application should be amended to include only the goods and/or services that are unencumbered by objections. This will allow this application to be re-examined prior to acceptance.
- The divided (child) application should only include the goods and/or services to which objections apply.
For more information, please check hereSource: www.iponz.govt.nz Jan 31, 2019 (Newsletter Issue 1/19)Protection of EU Trademarks and Designs when No Brexit DealThe UK government informs on the different eventuality, including a no deal scenario:
Existing registered EU trademarks and registered Community designs
- Will continue to be valid in the remaining EU member states
- Protection in the UK will be through a new, equivalent UK right granted with minimal administrative burden
- The Office will notify rights holders by publishing a notification and guidance on its website
- Rights holders will be able to opt out if they do not want to receive an equivalent UK trademark or design
- Provision will be made and information provided regarding the status of ongoing legal disputes involving EU trademarks or registered Community designs before the UK courts
Pending applications for an EU trademark or a registered Community design
- Applicants will not be notified
- After exit they will need to consider whether they refile with the Intellectual Property Office (UKIPO) to obtain protection in the UK
- Refiling will take place at the UKIPO under the same terms for a UK equivalent right, using the normal application process in the UK.
- Rights holders taking this step will meet the cost of refiling the application in accordance with the UK application fee structure.
- For a period of 9 months from exit, the filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application will be recognised.
New applications
- Will be eligible to be filed in the UK for UK trademarks and designs as they are now, and at the cost specified in the UK fee structure.
- UK applicants, like EU and third country applicants, will be able to apply for protection in the EU through an EU trademark or registered Community design as they do currently
- Applying for trademark or design protection in the UK can be done via post or online.
Unregistered Community designs
- The unregistered Community design provides a 3 year protection from the date the design is first disclosed within the EU. Unregistered Community designs existing at the Brexit point will continue to be protected and enforceable in the UK for the remaining period of protection of the right.
- The UK will create a new unregistered design right in UK law which mirrors the characteristics of the unregistered Community design ('Supplementary Unregistered Design Right'). Designs disclosed after Brexit will also be protected in the UK under the current terms of the unregistered Community design.
The same provisions will apply to international registrations designating the EU filed with the World Intellectual Property Organisation. Hence there is continued protection in the UK from March 2019 onwards for trademarks and registered designs (filed through the Madrid and Hague Systems, and designating the EU as the area where they apply).
For further information, please check hereSource: www.gov.uk Jan 15, 2019
Trademark Law Amended
The Royal Decree 23/2018 of December 21, 2018, implementing the Trademarks Directive 2015/2436 was published at the Official State Gazette on December 27, 2018, and entered into force for its main part on January 14, 2019.
Some of the most important changes are the following:
- No graphical representation requirement any longer
- Right to apply for registration: Any natural or legal person, regardless of nationality or place of residence or establishment, may apply for a trademark or trade name.
- New wording of absolute grounds prohibitions in Article 5
- Renowned or reputed trademarks: Concept of well-known/notorious trademarks is eliminated, while the concept of reputation is maintained introduced.
- Licensee rights: The licensee may only bring an action for trademark infringement with the proprietor’s consent, while the exclusive licensee will be entitled to bring an action if the trademark proprietor has failed to do so after having been asked by the licensee. Also, the licensee may intervene in proceedings initiated by the trademark proprietor to obtain compensation from the infringer.
- Rights conferred by the registration: Registration of a trademark does not confer on its owner immunity from infringement actions.
- Goods in transit
Cancellation and invalidity proceedings will be administrative proceedings before the Spanish Patent and Trademark Office. This amendment will enter into force on 14 January 2023.
Please note that the Spanish survey has been updated accordingly by our contributor Zivko Mijatovic & Partners, Spain.
Source: www.abg-ip.com; www.hoffmanneitle.com
Dec 13, 2018 (Newsletter Issue 21/18)
Accession to Madrid Protocol
On December 4, 2018, the Government of Samoa deposited its instrument of accession to the Madrid Protocol.
The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7) of the Protocol (individual fees), and Rule 20bis(6)(b) (recording of licenses in the International Register has no effect in Samoa), of the Common Regulations.
Furthermore, Samoa has made notifications, in accordance with new Rule 40(6) of the Common Regulations, concerning new Rules 27bis(1) (division of international registrations) and 27ter(2) (merger of international registrations resulting from the recording of the division of an international registration).
The Protocol will enter into force for Samoa on March 4, 2019.
Source: www.wipo.int
Dec 13, 2018 (Newsletter Issue 21/18)Change in Procedure of USPTO's Trademark CorrespondenceStarting December 7, 2018, the USPTO uses email communication for notices such as for trademark abandonment notices instead of postcards or paper notices if the user has authorized email communication.
It is important to provide and to maintain an accurate email address in order to not miss official trademark correspondence.
To sign up for email correspondence, or to change an email address on record with the Office, the 'TEAS Change of Correspondence Address form' should be used hereSource: www.uspto.gov Dec 13, 2018 (Newsletter Issue 21/18)
Electronic Exchange of Priority Certificate Documents for Design Applications with USPTO
The Korean Intellectual Property Office (KIPO) and US Patent and Trademark Office (USPTO) agreed to electronically exchange priority certificate documents for design applications starting December 1, 2018.
Source: www.pkkim.com
Dec 13, 2018 (Newsletter Issue 21/18)TMEP October 2018 AvailableOn October 31, 2018, the USPTO issued the October 2018 Trademark Manual of Examining Procedure (TMEP). This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before September 15, 2018.
The TMEP October 2018 version replaces the October 2017 version.
To access the TMEP October 2018 version, please click here. A complete list of changes, can be seen in the Change Summary hereSource: www.uspto.gov Dec 13, 2018 (Newsletter Issue 21/18)Accession to Hague Agreement on International Registration of Industrial DesignsOn November 9, 2018, the Government of Belize deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through its Office;
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Belize is 12 months; and
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Belize in respect of industrial designs is 15 years.
The 1999 Act and the declarations made will enter into force with respect to Belize on February 9, 2019.
For further information, please check hereSource: www.wipo.int Dec 13, 2018 (Newsletter Issue 21/18)
Electronic Exchange of Priority Certificate Documents for Design Applications with KIPO
The Korean Intellectual Property Office (KIPO) and US Patent and Trademark Office (USPTO) agreed to electronically exchange priority certificate documents for design applications starting December 1, 2018.
Source: www.pkkim.com
Dec 13, 2018 (Newsletter Issue 21/18)Notification on Common Regulations on Division/Merger of International RegistrationsThe Government of Colombia has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which will enter into force on February 1, 2019.
In accordance with new Rule 27ter(2)(b), Colombia has declared that its Office will not present to WIPO's requests for the merger of international registrations resulting from division, under paragraph (2)(a) of this new Rule, because the Andean Community Decision Number 486 Establishing the Common Industrial Property Regime (Decision 486) does not provide for the merger of registrations of a mark.
In addition, in accordance with new Rule 40(6), Colombia has notified that new Rule 27bis(1) of the Common Regulations is not compatible with Decision 486 and shall not apply in respect of Colombia. As a result, Colombia will not present to WIPO requests for the division of an international registration in respect of Colombia under this new Rule.
More information on the notification is available hereSource: www.wipo.int Dec 13, 2018 (Newsletter Issue 21/18)Declarations on Hague Agreement of Industrial DesignsOn June 7, 2013, September 3, 2013, and September 18, 2018, respectively, the Government of Belgium, the Government of Luxembourg and the Government of the Netherlands (for the European part of the Netherlands), deposited with WIPO their instruments of ratification/accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The said instruments were accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through the Benelux Office for Intellectual Property (BOIP);
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Benelux is 12 months;
– the declaration required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Benelux in respect of industrial designs is 25 years; and
– the declaration referred to in Article 19(1) of the 1999 Act, according to which the BOIP is designated as the common Office to the three Benelux countries and the territories of the three countries to which the Benelux Convention on Intellectual Property (trademarks and designs) applies are considered as one single Contracting Party for the application of Articles 1, 3 to 18 and 31 of the 1999 Act.
Therefore, in accordance with Articles 27(3)(c), 28(3)(b), 30(1)(i) and 30(2) of the 1999 Act, the 1999 Act and the declarations made under Articles 4(1)(b), 11(1)(a) and 17(3)(c) of the same Act, will enter into force, with respect to Benelux, on December 18, 2018.
More information on the declarations is available hereSource: www.wipo.int Dec 13, 2018 (Newsletter Issue 21/18)Examination Guidelines on Procedural Examination of Applications for TM Registration PublishedThe Taiwan Trademark Office (TIPO) published the Examination Guidelines on Procedural Examination of Applications for Trademark Registration on October 19, 2018.
The Guidelines comprise a total of 15 chapters containing information on filing and withdrawal of applications, filing fees, trademark application form and filing date, priority right and exhibition priority right, etc.
The Guidelines aim at understanding the procedural requirements for the filing of a trademark application, ensuring a broader protection of the rights and interests of applicants and increasing efficiency in the examination of trade mark applications.
TIPO encourages making use of the Guidelines. For more information, please check hereSource: www.tipo.gov.tw Dec 13, 2018 (Newsletter Issue 21/18)Trademark Legislation Changed SoonAs of January 1, 2019, several changes to the Swedish Trademark Act and related constitutions will come into force. The changes mark the end of a revision that started at EU level almost ten years ago.
Some of the important changes are below:
- The graphical representation requirement for trademarks is abandoned
- Changes to opposition proceedings, for example a due date for settlement of objections, requirements of use as a basis for revocation and, that decisions on revocation apply retroactively
- Trademark duration starts from the date of application and not from the date of registration
- Trademark registrations can be renewed at the earliest 6 months before and at the latest 6 months after the expiration date
- Launch of new e-service for trademark renewal
Further, a new law, the Company Name Act, replaces the existing Trade Names Act of 1974. The new law will have a more modern language, and will therefore make it easier for business owners to understand the rules and act according to the legislation. In connection with this, some additions in the practical processing are also implemented.
For more information, please check the update of the Swedish Patent and Registration Office here and of our Country Index partner Groth & Co. hereSource: www.prv.se, www.groth.eu Nov 30, 2018 (Newsletter Issue 20/18)Change to Official Fee Structure and Increase SoonThe Benelux Office for Intellectual Property (BOIP) informs that they will introduce a number of modifications to the fee structure for trademarks and designs, including a fee increase.
From January 1, 2019, the basic fee for trademark applications and renewals will no longer cover three classes of goods or services. A basic fee will cover one class and a fee for each extra class of goods or services will be added.
The same fee structure is also in use by EUIPO and many of the EU Member States. The aim is to encourage registration of trademarks for the goods and services for which they will actually be used, and to prevent the descriptions to be too broad.
With respect to trademark renewals, it will be possible from January onwards to renew a trademark registration for only some of the indicated classes.
In the case of applications for designs there will no longer be a supplement per added image. The fee structure for designs will be simplified by doing away with the outdated splitting of costs for applications for designs.
Further, from January onwards, the same fee level and structure as applies to trademarks will be applied to modifications of design registrations.
For more information on the official fees, please check here (currently only available in Dutch)Source: www.boip.int; www.landmark.eu Nov 30, 2018 (Newsletter Issue 20/18)
Pending Trademark Applications Online Now
Recently, the information on all pending trademark applications in Kazakhstan became available on the National Institute of Intellectual property (NIIP) website, in Russian and Kazakh languages only.
The applications are published online within five working days after the formal examination is completed. This will simplify the monitoring of potentially infringing applications, enabling rights holders to file observations and oppositions before such applications become registrations.
Source: www.petosevic.com
Nov 30, 2018 (Newsletter Issue 20/18)Accession to Hague Agreement on International Registration of Industrial DesignsOn October 26, 2018, the Government of San Marino deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The following declarations have been communicated:
– international applications may not be filed through the national Office;
– the maximum duration of protection provided for by the legislation of San Marino in respect of industrial designs is 25 years.
The Act and the declarations made will enter into force with respect to San Marino on January 26, 2019.
For further information, please check here Nov 30, 2018 (Newsletter Issue 20/18)Notification on Common Regulations on Division/Merger of International RegistrationsMadagascar notified WIPO that its Office will not present to WIPO requests in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations because the legislation of Madagascar does not provide for the division of registrations of a mark.
Further, Madagascar declared that its Office will not present to WIPO requests in accordance with new Rule 27ter(2)(b) of the Common Regulations because the legislation of Madagascar does not provide for the merger of registrations of a mark.
More information on the notification is available here Source: www.wipo.int Nov 30, 2018 (Newsletter Issue 20/18)Madrid E-Filing Available NowThe National Intellectual Property Center of Georgia – Sakpatenti informed that it has joined the WIPO-administered e-filing program, by means of which Georgian users will be able to file their international applications electronically, which will simplify for them the procedure of extension of trademarks to the member states of the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks”.
Georgia has been a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks since 1998.
The e-filing is available via Sakpatenti’s website here Nov 30, 2018 (Newsletter Issue 20/18)Madrid E-Filing Available NowThe Trademark Office of China National Intellectual Property Administration (CNIPA) provides online filing services for international applications (Madrid).
The e-filing is available via CNIPA's website hereSource: www.wipo.int; www.saic.gov.cn Nov 30, 2018 (Newsletter Issue 20/18)Consultation on Draft IP RegulationsIP Australia informs that they are seeking input from interested parties about proposed changes to Australia’s IP regulations.
The draft regulations make consequential amendments as a result of the changes proposed in the Intellectual Property Laws Amendment (Productivity Commission response Part 2 and Other Measures) Bill 2018. They also improve and streamline processes involved with obtaining and maintaining IP rights and ensure Australia’s compliance with international treaties.
The Office invites to provide a written submission on the draft regulations by December 21, 2018.
More information can be seen hereSource: www.ipaustralia.gov.au Nov 30, 2018 (Newsletter Issue 20/18)Brexit Withdrawal Agreement FinalisedThe official draft Agreement on the withdrawal of the UK from the EU was released.
Regarding intellectual property, as already foreseen in the no-deal scenario, EU IP rights will continue to be protected in the UK after Brexit.
Therefore, holders of IP rights which have been registered or granted before the end of the transition period will become the holder of a comparable UK right.
The provisions regarding IP rights are covered under Title IV (Articles 54 to 61) in the Withdrawal Agreement. To access the Agreement, please click hereSource: www.euipo.europa.eu Nov 30, 2018 (Newsletter Issue 20/18)New Trademark Regime Coming SoonOn November 14, 2018, the new Trademark Regulations were published in the Canada Gazette Part II, revealing that Canada's new trademark regime is set to be in force on June 17, 2019.
These amendments impact all aspects of trademark selection, filing procedures, oppositions, registration and enforcement. Some of the important changes are below:
- Expansion of non-traditional marks
- Declarations of use no longer be required at the time of application
- Goods and services must be classified according to the Nice Agreement
- Introduction of a class-based fee structure
- Priority claims can be asserted from any prior application
- Ability to divide applications and registrations
- Reduction of term of protection from 15 years to 10 years
- Accession to the Madrid Protocol
- The new distinctiveness examination criteria will apply to all pending applications
The Trademarks Regulations: SOR/2018-227 can be accessed hereSource: www.bereskinparr.com; www.gazette.gc.ca Nov 15, 2018 (Newsletter Issue 19/18)
Declaration of Maximum Duration of International Registrations of Industrial Designs
On June 14, 2018, the Moroccan Industrial and Commercial Property Office (OMPIC) provided to WIPO a declaration as required under Rule 36(2) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, specifying that the maximum duration of protection provided for by the legislation of Morocco in respect of industrial designs is 25 years.
The declaration states that the duration of protection is provided for in Article 122 of Law No. 17-97 on the Protection of Industrial Property (as amended by Law No. 23-13) that came into effect on December 18, 2014.
For further details concerning the applicability of the new duration of protection to an international registration designating Morocco, please contact OMPIC directly at: dmi@ompic.ma
Source: www.wipo.int
Nov 15, 2018 (Newsletter Issue 19/18)
Eighth Edition of Vienna Classification Implemented by CIPO
The Canadian Intellectual Property Office (CIPO) has implemented the classification schema in accordance with the Eighth Edition of the Vienna classification (VCL).
The updates will not impact the current layout of disseminated trademarks data, in the sense that no new data fields will be created. However, a number of trademark records will be reclassified to comply with the schema. The reclassification process will occur over a period of eight (8) weeks, starting the week of October 15, 2018.
Source: www.ic.gc.ca
Nov 15, 2018 (Newsletter Issue 19/18)New Industrial Design Office Practice Manual PublishedThe Canadian Intellectual Property Office (CIPO) announced the publication of the new Industrial Design Office Practice Manual (IDOP) that came into force on November 5, 2018.
The IDOP is an important tool for communicating CIPO's internal office practices and procedures to applicants and their agents; it is the primary public source for information on how to prosecute an application for the registration of an industrial design.
The IDOP sets out how CIPO will operationalize the legislative and regulatory changes necessary for Canada to accede to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). Source: www.ic.gc.ca Nov 15, 2018 (Newsletter Issue 19/18)
Pending Trademark Applications Published More Swiftly
On August 1, 2018, the Ukrainian IPO started publishing information on pending trademark applications in its online database immediately after sending a confirmation of the trademark application filing date to the applicant.
The information on pending applications will now be published online within two months of the filing date of the trade mark application. Until recently, the IPO did not publish the information until at least six months after filing.
Trademark owners are now able to monitor new applications shortly after filing to ensure timely enforcement of their earlier rights.
Source: www.petosevic.com
Nov 15, 2018Applications via Hague System for Industrial Designs Possible NowCanada has joined the Hague System as of November 5, 2018. Industrial design owners can now designate Canada in an international industrial design application.
The total number of Contracting Parties that can be designated in an international design application is now 69.
The application can be filed electronically hereSource: www.wipo.int Nov 15, 2018 (Newsletter Issue 19/18)Notification on Common Regulations on Division/Merger of International RegistrationsTurkey informed WIPO that its Office will not present to WIPO requests in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations because the Industrial Property Code of Turkey does not provide for the division nor for the merger of registrations of a mark.
More information on the notification is available here Source: www.wipo.int Nov 15, 2018 (Newsletter Issue 19/18)Notification on Common Regulations on Division/Merger of International RegistrationsAustralia informed WIPO that its Office will not present to WIPO requests in accordance with new Rules 27ter(2)(b) of the Common Regulations because the Australian Trade Marks Act 1995 does not provide for the merger of registrations of a mark. In addition, in accordance with new Rule 40 of the Common Regulations, the Government of Australia has notified that new Rule 27bis(1) of the Common Regulations is not compatible with the Australian Trade Marks Act 1995 and shall not apply in respect to Australia.
More information on the notification hereSource: www.wipo.int Nov 15, 2018 (Newsletter Issue 19/18)Drafts Amendments to IP LegislationIn September 2018 the Ukrainian Ministry of Economic Development and Trade released a new draft law for public review as the previous draft law did not get support in the Ukrainian Parliament.
The draft law amends certain legislative acts aiming to improve the protection and enforcement of rights relating to patents, utility models, designs and trademarks.
Some of the amendments will include:
- Introduction of an electronic filing system for patents, utility models, trademarks and designs
- Alignment of the grounds for refusal of trademarks
- Specification of rules for national examination and protection of international registration under the Madrid System
- Limitation of protection of utility models to devices and apparatus only
- Introduction of ‘individual character’ as an additional eligibility criterion regarding designs
For further information, please check the article of the law firm PETOŠEVIĆ Ukraine hereSource: www.petosevic.com Nov 15, 2018 (Newsletter Issue 19/18)
Registry to be Divided Soon
Nigeria confirmed that the Registry of Trademarks, Patents and Designs will be divided into two registries. The following registries are planned in due course:
- Patents and Designs Registry, housed by the Patents and Designs Unit of the Commercial Law Department of the Ministry the Federal Ministry of Industry, Trade and Investment.
- Trademarks Registry, housed by the Trademarks Unit of the same department
This decision is confirmed in a letter from the Head of the Civil Service of the Federation to the Permanent Secretary of the Federal Ministry of Industry, Trade and Investment dated October 22, 2018.
Source: www.spoor.com
Oct 30, 2018 (Newsletter Issue 18/18)
Three-Year Customs Watch Term Introduced
The new Federal Law “On customs regulations in the Russian Federation” was adopted on August 3, 2018, and entered into force on September 4, 2018.
While certain transitional provisions will not enter into force until December 2018 and February 2019, those related to the protection of intellectual property rights are already in effect.
The main novelty concerns the maximum customs watch protection period, which has been extended from two to three years. Rights holders can now choose between a one-, two- or three-year protection term when filing or renewing customs watch applications.
As before, the customs watch may be renewed for an indefinite number of times.
Source: www.petosevic.com
Oct 30, 2018 (Newsletter Issue 18/18)Hague Agreement for Industrial Designs Ratified by NLThe Kingdom of the Netherlands (for the European part of the Netherlands) has deposited the instrument of ratification of the Hague System for the international registration of industrial designs on September 18, 2018.
The instrument was accompanied by a declaration under Article 19, according to which:
"The Benelux Office for Intellectual Property has been designated as the common office for the three Benelux countries. The territories of the three countries to which the Benelux Convention on Intellectual Property (trademarks and designs) applies are, as a whole, considered to be one single Contracting Party for the purposes of Articles 1, 3 to 18 and 31 of the Geneva Act".
WIPO reminds that the Kingdom of Belgium deposited, on June 7, 2013, its instrument of ratification of the Geneva Act, and the Grand Duchy of Luxembourg deposited its instrument of accession to the said Act, on September 3, 2013.
The Geneva Act will enter into force, with respect to the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands, on December 18, 2018.
For more information on The Hague Notification No. 135, please click hereSource: www.wipo.int Oct 30, 2018 (Newsletter Issue 18/18)Online Trademark Renewal Filing NowKuwait has upgraded its system and switched from manual filing of renewal applications to online filing.
However, the data in the online portal is incomplete and some of the old marks are not available. Agents need to coordinate with the Kuwaiti Trademark Office to complete the trademark details in the portal when filing the renewal request online.
Source: JAH & Co. IP, Qatar Oct 30, 2018 (Newsletter Issue 18/18)
Value Added Tax Rate Introduced Soon
On October 5, 2018, the Kingdom of Bahrain issued Law No. 48 of 2018 with respect to Value-Added Tax (VAT Law). The VAT Law will come into effect from January 1, 2019, making Bahrain the third Gulf Cooperation Council (GCC) Member State to introduce value-added tax (VAT).
The VAT rate will be five percent and will be applicable on all Intellectual Property matters.
Source: www.agip.com
Oct 30, 2018 (Newsletter Issue 18/18)
Accession to Singapore Treaty
WIPO notifies the accession of Peru to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Peru, on December 27, 2018.
Source: www.wipo.int
Oct 30, 2018 (Newsletter Issue 18/18)Draft Trademarks Act BillThe Finnish Trademarks Act has been revised and a Government bill was submitted on October 18, 2018. It is intended that the new Trademark Act is to enter into force on January 1, 2019.
The Government bill proposes to implement the revised EU Trademark Directive, to enforce the Singapore Treaty on the Law of Trademarks and to bring the present trademark regulation up to date. In addition, the Government bill includes amendments to related legislation such as the Finnish Company Names Act, the Criminal Code and relevant procedural acts. The new Trademarks Act will also result in the annulment of the current Finnish Act on Collective Marks since the provisions concerning collective marks and control marks will be included in the new Act.
Some of the key amendments are the following:
- administrative procedure for the revocation and declaration of invalidity in addition to the current civil proceedings
- administrative procedures to deal with partial or total revocation of company names and auxiliary trade names in addition to the current court proceedings; however, such alternative administrative procedures would be limited to cases of non-use.
- invocation of the five-year partial or total non-use of a claimant’s trademark or trade name as a defence in opposition, revocation, or invalidation proceedings.
- waiver of the graphical representation requirement
- new classification rules
- the introduction of an exclusive right of a Finnish trademark owner in situations where counterfeit goods are caught in transit
- introduction of a clear provision criminalising infringement of EU trademarks (typically counterfeits)
Further, under the Government bill, owners of registrations filed before October 1, 2012, using the Nice class headings (or only class number if filed before 1996) shall specify their list of goods and services to ensure that they follow the new classification provisions by the renewal of the respective trademark registrations.
For further information, please check the article of the law firm Borenius Attorneys Ltd hereSource: www.borenius.com Oct 30, 2018 (Newsletter Issue 18/18)Draft Trade Secrets Directive Bill in NLOn October 16, 2018, the Dutch Senate passed a Bill that implements the EU Trade Secrets Directive (the Bill). The Bill, after its publication as Act, shall enter into force at a time to be determined by Royal Decree.
The debate in the Senate concentrated on a provision of the Bill that gives the court the ability to order the unsuccessful party to pay the full legal costs of the other party (the Provision). The Provision forms no part of the EU Trade Secrets Directive so the Netherlands opted for a broader protection for trade secrets than the directive provides.
For more information, please click hereSource: www.taylorwessing.com Oct 30, 2018 (Newsletter Issue 18/18)Draft IP Laws in Progress Progress has been made since the IP bills have been adopted by the Amyothar Hluttaw (“Upper House”) last February.
The Trademark Bill is being reviewed by the Lower House’s Bill Committee.
According to the Bill, all marks currently recorded with the Registry of Deeds and Assurance would need to re- applied when the new law enters into force, otherwise they won’t be valid. The Lower House considers adding a transitional period of 3 or 6 months to the Bill for trademark owners to re-apply their marks.
With regard to trademarks, the most important features of the Bill include:
- Introduction of first-to-file rule instead of the first-to-use rule as applied in the past;
- Registrable marks would include trademark, service mark, collective and certification marks and possibly three-dimensional marks (i.e. product shape);
For further information on the Trademark Bill, the Copyright Bill as well as on the Patent and Design Bill, please check the article of the law firm Rouse hereSource: www.rouse.com Oct 11, 2018 (Newsletter Issue 17/18)Belgian Act on the Protection of Trade Secrets AdoptedThe Belgian Act on the protection of trade secrets, implementing the EU Directive 2016/943 came into force on August 22, 2018.
It aims at protecting undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. The Act introduces specific provisions on trade secrets in existing legislations (namely the Code of Economic Law, the Judicial Code and the Employment Contracts Act of 3 July 1978). Amongst other provisions, the Act introduces new legal actions and an increased protection of the confidentiality of trade secrets in the course of legal proceedings.
For more information, please click hereSource: www.linklaters.com Oct 11, 2018 (Newsletter Issue 17/18)New Trade Secret Act in ForceThe Hungarian parliament has finally adopted the new act on the protection of trade secrets ("Trade Secrets Act") which will transpose the Trade Secrets Directive EU 2016/943 into national law. Hungary implemented the rules of the Directive by way of adopting a separate new act on July 20, 2018. The new act came into force on August 8, 2018.
The definition of trade secret is now amended to be in line with the Directive, including the secret nature of the information. The new definition stresses that trade secret protection only applies if "it has been subject to reasonable steps under the circumstances to keep it secret".
The new Trade Secrets Act moves away from the current Hungarian concept and ensures protection of trade secrets similar to intellectual property rights, especially in the case of an infringement. It removes the trade secret and know-how protection from the personality rights section of the Civil Code and clarifies that they are marketable economic rights. They can be sold as a whole or in part, and they can be licensed to a contracting party.
For more information, please click hereSource: www.schoenherr.eu Oct 11, 2018 (Newsletter Issue 17/18)Act on Protection of Trade Secrets in ForceOn July 1, 2018, the new Swedish Act on the Protection of Trade Secrets entered into force. It is based on the Directive EU 2016/943 and follows the principles in the previous law, with some adjustments and adaptions. The government underlines that an overall purpose with the new law is the importance of securing competitiveness and improve the conditions for innovation and knowledge transfer.
The new law strengthens the protection of trade secrets, while at the same time placing higher demands for active actions by companies to inform employees with access to sensitive information regarding what information is considered trade secrets.
For more information, please click hereSource: www.magnussonlaw.com Oct 11, 2018 (Newsletter Issue 17/18)
Intellectual Property Policy Launched
Zimbabwe has launched its National Intellectual Property Policy and Implementation Strategy on June 28, 2018.
The document acknowledges that the country’s economy is in a poor state after many years of misrule. However, the IP Policy is to ensure that the IP governance framework leverages the country’s IP potential for inclusive and sustainable economic growth and development. It outlines specific objectives which, among others, include raising and consolidating IP awareness; enhancing IP knowledge and professional skills capacities; protecting and enforcing IP; and encouraging and facilitating IP commercialisation.
Source: www.spoor.com, www.ip-unit.org
Oct 11, 2018 (Newsletter Issue 17/18)Official Fees ReducedThe Turkish Patent and Trademark Office (TURKPATENT) reduced some official fees up to 40 percent. New fees were published on September 5, 2018.
The discount covers fees for trademarks, designs and patents. The new official fee for filing a trademark application is TRY 180.00 per class. The official fee for registration is TRY 495.00 which is independent of the number of classes covered.
Source: Istanbul Patent A.S., Turkey and www.turkishipnews.blogspot.com Oct 11, 2018 (Newsletter Issue 17/18)Declaration of Use for International Registrations Designating Mexico RequiredWIPO informs that the Mexican Institute of Industrial Property (IMPI) has provided information regarding amendments to the Mexican Industrial Property Law which entered into force on August 10, 2018.
Holders of international registrations containing the designation of Mexico must file now a declaration of actual and effective use of the mark. Such declaration shall be filed directly with IMPI in the appropriate official format, as prescribed by the applicable laws and regulations and upon payment of a fee:
- within a three-month period, following three years counted from the date
on which protection was granted in Mexico, as specified in the declaration sent by IMPI to the International Bureau of WIPO pursuant to Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and
- within three months from the notification of the renewal of the
international registration by the International Bureau of WIPO as from August 10, 2018.
The declaration of actual and effective use of the mark must be filed by the holder’s authorized representative with a local address, or by a legal representative in Mexico. A local address is required for purposes of notification.
On failure to file the declaration of actual and effective use within the prescribed time limits, IMPI shall declare, ex officio, the cancellation of the mark that is the subject of an international registration containing a designation of Mexico. IMPI can be contacted for further information.
For further information on the notice, please click hereSource: www.wipo.int Oct 11, 2018 (Newsletter Issue 17/18)Government’s Notices on 'No Deal' BrexitOn September 24, 2018, the UK government has published a series of technical notices in the event in which the UK leaves the EU without an agreement (a 'no deal' scenario).
The government announces that they will work to provide continued protection in the UK after March 2019 of trademarks and designs.
Registered EU trademarks and registered Community designs:
Protection will be through a new, equivalent UK right which will come into force once UK will exit the EU. The new UK right will be provided with minimal administrative burden. The trademark or design will then be treated as if it had been applied for and registered under UK law. This means that these trademarks and designs:
- will be subject to renewal in the UK
- can form the basis for proceedings before the UK Courts and the Intellectual Property Office’s Tribunal
- can be assigned and licensed independently from the EU right
Applications for EU trademarks and Community design:
Ongoing applications at the date of exit can be refiled with the Intellectual Property Office under the same terms for a UK equivalent right, using the normal application process for registered trademarks and registered designs in the UK. This can be done via post or online. Forms and instructions can be found here for trademarks and here for registered designs.
Filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application will be recognised by the UK government for a period of nine months from the exit. The UK application fee structure will apply.
International Registrations for trademarks and designs designating the EU:
The UK is working to provide continued protection in the UK from March 2019 onwards for trademarks and registered designs. This also includes practical solutions for pending applications.
For further information, please click here
Check the notices on patents, copyrights and information on the exhaustion of intellectual property rights if there’s no Brexit deal hereSource: www.gov.uk Sep 20, 2018 (Newsletter Issue 16/18)Law on the Protection of Trade Secrets AdoptedThe Law on the Protection of Trade Secrets has now been adopted by the National Assembly (Assemblée Nationale) and the Senate (Sénat) on June 14 and 21, 2018, to implementing the EU Directive 2016/493.
To ensure that the law complies with the French constitution, it has been validated by the Constitutional Council (Conseil constitutionnel) on July 26, 2008.
The law introduces a harmonised definition of trade secrets and a set of protective rules of a civil nature into the French Commercial Code (the "Commercial Code"), with several exceptions (Articles L. 151 – 1 to L. 154 – 1 of the Commercial Code).
For more information, please click hereSource: www.whitecase.com Sep 20, 2018 (Newsletter Issue 16/18)Competences of Trademark Office ExpandedOn September 07, 2018, Legislative Decree No. 1397 was published in the official gazette "El Peruano". The Decree amends Legislative Decree 1075, which approves the complementary provisions to the Decision 486 of the Commission of the Andean Community.
The provisions of the administrative procedures under the responsibility of the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) have been specified.
The range of IP elements which form part of the competences of the Trademark Office INDECOPI has been extended to include:
- Geographical indications
- Traditional specialties guaranteed
The changes will be in force with the publication of the Supreme Decree that regulates them.
Further information can be seen hereSource: www.barlaw.com.pe Sep 20, 2018 (Newsletter Issue 16/18)Ruling on Non-Use Grace PeriodAs reported earlier, the Ukrainian courts face a dilemma in non-use cancellation actions as to what the applicable grace periods really is. The existing Ukrainian Trademark Law provides for a 3-year non-use grace period, while Article 198 of the IP-related provisions of the EU-Ukraine Association Agreement sets forth the 5-year non-use grace period. Ukraine has not adopted any laws that would implement provisions of the EU-Ukraine Association Agreement in the national legislation yet. Only a draft law has been submitted to the Parliament implementing the provisions of Art. 198 on January 23, 2017.
In a court ruling dated February 12, 2018, by the Commercial Court of Kyiv in the case no. 910/14972/17, the judge applied a five-year non-use grace period, as provided for under the Association Agreement (Art. 198), and rejected the non-use cancellation action, which was based on the three-year grace period, as per Ukrainian Trademark Law.
The case went to the Kyiv City Commercial Court of Appeal and ended up reaching the Ukrainian Supreme Court, which upheld the decision of the lower courts on July 17, 2018. The Supreme Court ruled on the direct applicability of the EU-Ukraine Association Agreement applying a five-year non-use grace period.
For further information, please check the article of the law firm PETOŠEVIĆ Ukraine hereSource: www.petosevic.com Sep 20, 2018 (Newsletter Issue 16/18)Guideline on Trademark Applications/Keeping Registering RevisedThe German Patent and Trade Mark Office (DPMA) informs that the guideline for the examination of trademark applications and the keeping of the register (guideline on trademark applications) has been thoroughly revised and entered into force in its new version on August 1, 2018.
It will replace the guidelines for the examination of trademark applications of June 13, 2005 (Blatt für Patent-, Muster- und Zeichenwesen 2005, p. 245 et seqq.) in the version of December 15, 2009.
The guideline on trademark applications aims to ensure a uniform and speedy examination of trademark applications and register matters.
The new version of the guideline can be accessed here (in German only).Source: www.dpma.de Sep 20, 2018 (Newsletter Issue 16/18)White Paper on EU IP Rights after BrexitThe UK government has given further reassurances to business that EU intellectual property rights will continue to be protected in the UK after Brexit.
On July 12, 2018, the UK government published a White Paper on the future relationship between the United Kingdom and the European Union, setting out an important vision for elements of the future relationship between the UK and EU on IP.
For more information on updates, please also click hereSource: www.iprhelpdesk.eu; www.gov.uk Sep 20, 2018 (Newsletter Issue 16/18)
Accession to Hague Agreement for Industrial Designs
WIPO notifies the deposit by the Government of Canada, on July 16, 2018, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force on November 5, 2018.
Source: www.wipo.int
Sep 20, 2018 (Newsletter Issue 16/18)Modernization of CIPO's Online Practice ManualsThe Canadian Intellectual Property Office (CIPO) informs that they are modernizing their online practice manuals.
The Office asks for feedback on the BETA Manual of Patent Office Practice (MOPOP) and BETA Trademarks Examination Manual (TEM).
New Industrial Design Office Practice Manual (IDOP) will be available soon.
Feedback, questions or comments can be directed to the Client Service hereSource: www.ic.gc.ca Sep 20, 2018 (Newsletter Issue 16/18)New Parallel Importation Laws in ForceThe Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) received Royal Assent on August 24, 2018.
Part 1 of the Act amends the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark. Part 1 of the Act commenced on August 25, 2018.
Trademark owners will now find it much more difficult to prevent parallel imports coming into Australia.
The Act also includes the following measures in response to the Productivity Commission’s inquiry into Australia’s IP system:
- Amendments to the Trade Marks Act to change the period that must elapse before non-use actions can be made against registered trademarks, from five years to three years;
- Amendments to the Plant Breeder’s Rights Act 1994 (Cth) with respect of plant breeder’s rights in essentially derived varieties; and
- Amendments to the Patents Act 1990 (Cth) such that patentees of pharmaceutical patents with an extended term are no longer required to provide the Secretary of the Department of Health with certain data.
For more information, please click hereSource: www.klgates.com Sep 20, 2018 (Newsletter Issue 16/18)IP Dispute Resolution More Affordable NowOn July 1, 2018, a specialist intellectual property (IP) list was introduced to the Federal Circuit Court system with the objective of providing efficient and cost effective dispute resolution for IP matters in a more consistent and timely manner. The initiative is intended to give litigants greater access to the courts with less risk and reduced costs.
Key points of the new IP list are:
- Court filing fees for initiating proceedings have been almost halved.
- IP matters will now be heard by a specialist judge with specific expertise in IP law.
- Matters are to be before the court within 3 weeks of proceedings being issued.
For more information, please click hereSource: www.kcllaw.com.au Sep 19, 2018 (Newsletter Issue 16/18)
Increase in Number of Judges in IP Court
The Ukrainian Supreme Council of Justice has recently approved an increase in the number of judges in the Intellectual Property (IP) Court from 21 to 30.
The IP Court, the establishment of which was announced as part of the Ukrainian 2016 judicial reform and became imminent in late 2017, was meant to comprise 21 judges.
On July 23, 2018, the Supreme Council of Justice received a request from the head of the State Judicial Administration of Ukraine to increase the number of judges to 30, nine of whom would work in the appellate division of the court. The Supreme Council of Justice approved the request on July 31, 2018.
The increase in the number of judges is likely to improve the quality and efficiency of IP dispute consideration once the IP Court starts operating, which is expected to happen once all the judges are recruited.
Source: www.petosevic.com
Sep 06, 2018 (Newsletter Issue 15/18)
The New Trade Secrets Act in Force
The new Trade Secrets Act takes effect on August 10, 2018 which ended now the process of implementing the EU Trade Secrets Directive 2016/943/EU in Finland.
The new Act replaces the provisions of the Unfair Business Practices Act on the unlawful use of trade secrets and technical specifications, and provides clearer and harmonised definitions at the EU level for trade secrets and for the lawful and unlawful acquisition, use and disclosure thereof.
In addition, the Act offers more specific and extensive civil remedies against the unlawful acquisition, use or disclosure of a trade secret, such as provisions that enable courts to order not only precautionary measures, injunctions and damages, but also corrective measures and – under certain conditions – compensation for use instead of an injunction and corrective measures.
The Finnish district courts now will have jurisdiction to decide both civil and criminal cases concerning the unlawful exploitation of trade secrets, whereas the Market Court will hold parallel jurisdiction in civil proceedings where the respondent acts as a legal entity or an entrepreneur.
Source: www.borenius.com
Sep 06, 2018 (Newsletter Issue 15/18)Submission of Notarized and Legalized PoA RequiredThe Afghan Trademark Registration Office (ATRO) has stipulated that it is no longer permitted to file trademark applications without a scanned copy of the notarized and legalized power of attorney up to the Afghani Consulate abroad. The original power of attorney needs to be submitted within one month from the date of filing. This decision has been put into effect as of August 29, 2018.
Source: JAH & Co. IP, Qatar Sep 06, 2018 (Newsletter Issue 15/18)IP Legislation AmendedOn July 3, 2018, various intellectual property legislation amendments came into force in Kazakhstan. The amendments were adopted in order to fill the gaps in the existing legislation and to simplify the administrative procedures related to obtaining IP rights protection.
Some of the most significant changes are outlined below:
- The National Institute of Intellectual property (NIIP) is now only involved in the IP rights registration process. The Ministry of Justice (MoJ) will be responsible for general regulatory functions. Before, both Offices were involved in the IP rights registration process.
- Well-known trademark applications can now only be considered by the MoJ Board of Appeal, while they were also considered by courts before.
- The examination periods for trademark applications have been reduced.
- All trademark applications are to be published in the Official Bulletin within 5 business days after the formal examination is completed.
- To confirm registration, amendment, renewal etc., right holders may now refer to certificates and attachments thereto without requesting additional extracts from the State Register of Trademarks.
- Date of creation of the exclusive right is the registration date of the trademark.
- Procedure for cancellation of non-use has been changed.
- Use of a trademark in a modified form may constitute use of the mark.
- Further amendments refer to licensing and geographical indications.
For further information, please check the article of the law firm Dentons Kazakhstan LLP hereSource: www.petosevic.com, www.dentons.com Sep 06, 2018 (Newsletter Issue 15/18)Additional Fees for Recordal Certificates Required Now As of March 1, 2018, the Commerce & Intellectual Property Office (CIPO) of St. Vincent no longer issues recordal certificates evidencing changes of name, changes of address, and assignments and other transmissions as a matter of course. Instead, the registry sends letters notifying the agents that the recordal was completed and entered on the register of marks.
It is still possible to obtain a certificate of recordal, if desired. It must be explicitly requested and an additional official fee paid.
Source: Caribbean IP, USA Sep 06, 2018 (Newsletter Issue 15/18)Official Fees IncreasedOn April 1, 2018, the Trade Marks Registry of Bermuda increased the official fees for trademark matters. Generally, the fees were raised by approximately 5 percent for matters including registration, renewal, and recordal of marks.
Source: Caribbean IP, USA Sep 06, 2018 (Newsletter Issue 15/18)
Trade Secrets Directive in Force
The Italian Legislative Decree 63 of May 11, 2018, implementing EU Directive 2016/943 on trade secrets, entered into force on June 22, 2018.
Some changes are the following:
- The protection has been increased. The acquisition, use or disclosure of a trade secret is now unlawful if the recipient knew, or should have known, that it had been obtained from someone who was using/disclosing it unlawfully.
- All rights and actions concerning the protection of trade secrets now have a prescriptive period of five years.
- Judges will have the possibility of restricting access to documentation containing trade secrets as well as restricting the number of people allowed to attend hearings.
- The judge must balance the opposing interests and take into account the specific circumstances of the case, including public interest.
Source: www.herbertsmithfreehills.com
Aug 22, 2018 (Newsletter Issue 14/18)Swaziland Is Named Eswatini NowThe country Swaziland is now known as Eswatini, formally the Kingdom of eSwatini. This is a result of a decision announced by the monarch, King Mswati III, on April 19, 2018.
The official gazette, Legal Notice No. 80 of 2018, states that reference in any written law, international agreement or legal document to Swaziland shall be read and construed as reference to eSwatini (English: Eswatini).
The ISO country codelist has been updated to reflect this change. The alpha-2 code SZ remains the same.Source: www.spoor.com; www.iso.org Aug 22, 2018 (Newsletter Issue 14/18)Recording of Licenses in International Register no EffectWIPO informed that the recording of licenses in the International Register has no effect in Afghanistan.
A license relating to an international registration of a mark needs to be recorded in the national Register of Afghanistan. The formalities required for such recording must be completed directly with the Office of Afghanistan and according to the conditions laid down by the legislation of that Contracting Party.
The declaration entered into force on June 26, 2018.
To access the WIPO notification, please click hereSource: www.wipo.int Aug 22, 2018 (Newsletter Issue 14/18)Important Changes in Opposition ProceedingsOn July 12, 2018, the Argentine PTO adopted Decision P-183, which initiated a new opposition procedure for trademark applications under Law No. 27,444, which brought about two substantial changes:
- It establishes an administrative proceeding instead of the previous one in which the matter was judicially settled.
- The burden of urging the proceedings now falls on the opponent; before, it was the applicant who was obliged to act.
This resolution will enter into effect as of September 16, 2018, but, in practice, all pending opposition proceedings must be adapted to this new process.
For further detailed information, please see hereSource: www.palacio.com.ar Aug 22, 2018 (Newsletter Issue 14/18)Requirement for Declaration of Use NowImportant amendments to the Mexican Law of Industrial Property have been published in the Federal Official Gazette on May 18, 2018, as reported earlier. The amendments came into force on August 10, 2018.
Under the new Law, declarations of use must be now filed at two points during the life of a registration:
- Within three months following the third anniversary of a trademark registration, counted from the date of registration, applicable to trademarks which are granted registration on or after August 10, 2018.
- At the time of filing for renewal application, which is every ten years counted from the application date of the trademark. This will be applicable to all trademarks which become due for renewal on or after August 10, 2018.
Further, no evidence of use needs to be filed, but rather only the completion and execution of the Declaration of Use Official Form yet to be published by the MPTO will be required.
With regard to International Registrations designating Mexico the declaration of use must be filed within three months following the third anniversary of the date on which the MPTO grants registration of the International Registrations (date of the National Certificate of Registration that is issued by the MPTO).
For further detailed information on the declaration of use and other amendments, please see here
Source: www.dumont.mx Aug 22, 2018 (Newsletter Issue 14/18)Procedures for Recordal of Assignments and Mergers RevisedThe Trademark Office in Lebanon informed on revised procedures related to the recordal of assignments and mergers.
All requests for recordal of assignments and mergers need now to be filed with the original certificate of registration as of June 29, 2019. Before a simple declaration attesting the recordal was sufficient.
Source: JAH & Co. IP, Qatar Aug 22, 2018 (Newsletter Issue 14/18)IP and Patent Bills PassedThe Intellectual Property Tribunal Act of 2018 entered into force without any accompanying regulations. The Act seeks to establish a decision-making body which will be responsible for hearing all matters and disputes involving intellectual property rights in Eswatini (Swaziland).
Further, the Patent and Design Act of 1997 and the Patent, Designs and Trade Marks Act of 1936 have now been replaced with the Patents Act. More information details will be published at a later stage.
Source: JAH & Co. IP, Qatar Aug 22, 2018 (Newsletter Issue 14/18)New Industrial Property Act in Force NowThe Namibian Industrial Property Act, 2012 has come into effect on August 1, 2018. The Act repeals the Patents, Designs, Trade Marks and Copyright Act, 1916, the Patents and Designs Proclamation, 1923 and the Trade Marks in South West Africa Act, 1973. As reported earlier, it provides for the registration and protection and administration of patents, utility model certificates, industrial designs, trademarks, collective marks, certification marks and trade names.
Source: JAH & Co. IP, Qatar Aug 22, 2018 (Newsletter Issue 14/18)Practice Notice on Special CharactersThe Canadian Intellectual Property Office (CIPO) published a practice notice in order to clarify its practice on special characters.
CIPO informs that special characters are those beyond the standard 26 letter Roman alphabet, numerals 0 to 9 and the following characters: & (ampersand), ˚ (degree) and % (percentage). Characters beyond those listed above, such as letters with accents (é, è, ö, etc.) and most Greek characters are considered special characters.
Some special characters cannot be entered in the database, nor can they be reliably reproduced in the Cover Page due to technical limitations.
Special characters appearing in names, titles or any other information that is transcribed into the database will be entered into CIPO's database according to the Special Character Conversion Table.
For more information and to access the Special Character Conversion Table, please click hereSource: www.ic.gc.ca Aug 22, 2018 (Newsletter Issue 14/18)
Accession to Madrid Protocol Soon
The Director General for Trademarks at the Canadian Intellectual Property Office announced the future accession of Canada to the Madrid Protocol. It is expected to join the treaty in early 2019.
Source: www.wipo.int
Aug 22, 2018 (Newsletter Issue 14/18)Law on Patents for Inventions, Utility Models and Industrial Designs AmendedThe amendments to the Belarus Law on Patents for Inventions, Utility Models and Industrial Designs entered into force on July 7, 2018.
One of the main novelties is the inclusion of public domain provisions. According to the amended law, a patent enters the public domain once it expires, is invalidated at the patent holder’s request, the legal entity that owns the patent ceases to exist, or if a patent holder dies without clear heirs or beneficiaries. When a patent enters the public domain, it may be used without the right holder’s consent and without remuneration, provided that the rules defining inventorship are respected.
Further, the law clarifies what can or cannot be recognized as an invention. For instance, methods of medical treatment are not patentable, while computer algorithms can be regarded as inventions.
The concept of 'dependent patent' for inventions and utility models is introduced, referring to inventions and utility models containing another invention or utility model already protected by an 'original patent'.
The maximum term of a utility model is now 10 years instead of eight. It is initially valid for five years and may be extended up to five years, not up to three years as before.
For further information, please see the article of the law firm PETOSEVIC hereSource: www.petosevic.com Aug 22, 2018 (Newsletter Issue 14/18)Non-Use Cancellation Actions Possible SoonStarting January 1, 2019, cancellation actions may be filed against registered trademarks which are not being used in Uruguay.
Any individual or legal entity with a direct, personal and legitimate interest will be entitled to file a cancellation action against a registered trademark that has not been used for a period of at least 5 years from its date of registration or last renewal.
Almost 5 years have passed since Law No. 19.149, which, in section 187, amended current section 19 of Law No. 17.011 (Trademark Act) and prescribed mandatory use of registered trademarks in Uruguay, became effective.
The Law does not provide for partial cancellations of trademarks, thus the use of any of the goods or services covered in the registration prevents trademarks from being cancelled. Also, should the trademark owner provide sufficient evidence of force majeure reasons for non-use of the trademark, cancellations shall not proceed.
For further information, please check hereSource: www.fox.com.uy Jul 24, 2018 (Newsletter Issue 13/18)Online Trademark Renewal System LaunchedThe UAE Trademark Office (TMO) has now completed the preparation of electronic trademark renewal services as part of its ongoing efforts to gradually switch to online services. It is now possible to file renewal applications, which will be published in the next issue of the Gazette, for which clips can be uploaded together with the publication of the local Gazette to issue the electronic renewal certificate.
It was also clarified that for all renewal applications filed as of December 6, 2015, it is possible to upload the publication of local newspapers and issue the electronic renewal certificate.
These e-services replace previous procedures that required the submission of documents and applications in person.
Source: JAH & Co. IP, Qatar Jul 24, 2018 (Newsletter Issue 13/18)Notarisation Required for Authorisation of Agent Forms On May 10, 2018, the Belize Intellectual Property Office (BELIPO) announced that all authorisations of agent forms must now be notarised. If notarisation is not common in a particular trademark owner’s jurisdiction, then legalisation will also be accepted as authentication of the signed document.
Nothing in the Trade Marks Act or related Trade Marks Rules indicates that notarisation or legalisation of forms is required. Neither the Act nor Rules were amended. However, the IPO is granted discretion in many matters and is relying on that discretion to institute the new notarization requirement.
Source: Caribbean IP, USA Jul 24, 2018 (Newsletter Issue 13/18)Trademark Practice Guidelines UpdatedThe Intellectual Property Office of New Zealand (IPONZ) has recently updated its trademark practice guidelines to reflect the following items:
1. Introduction of new practice guideline on absolute grounds – geographical indications
A new practice guideline has been added relating to the office’s interpretation of Section 20 of the Trade Marks Act 2002, which specifies that trademarks that contain geographical indications must not be registered in certain circumstances.
For more information, please check the new Trade Mark practice guideline here
2. Similarity of goods and services classes
IPONZ has added a new guideline regarding the similarity of goods in classes 32 and 33 which can be seen here
Further, a new Conflicting Class Goods and Services List has been released to supplement the existing Conflicting Class Table.Source: www.iponz.govt.nz Jul 24, 2018 (Newsletter Issue 13/18)New Industrial Design Regulations PublishedOn June 27, 2018, the Government of Canada published new Industrial Design Regulations (the Regulations) in the Canada Gazette (Part II). Finalizing the Regulations is an important step toward Canada’s accession to the Hague Agreement and the modernisation of Canada’s domestic industrial design regime.
Canada’s Hague accession and industrial design regime modernisation agenda also includes amendments to the Industrial Design Act, revisions to the Industrial Design Office Practices manual and improvements in e-services for clients, coming into force on November 5, 2018.
For more information, please check hereSource: www.canada.ca Jul 24, 2018 (Newsletter Issue 13/18)June Update of Manual of Procedure of the TBMP Available NowThe United States Patent and Trademark Office (USPTO) informs that the June 2018 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available on the Trademark Trial and Appeal Board webpage. The revision describes current practice and procedure under the applicable authority and relevant case law reported between March 3, 2017, and March 2, 2018.Source: www.uspto.gov Jul 24, 2018 (Newsletter Issue 13/18)New Regulation on Trademark RegistrationA new trademark regulation entered into force in Albania on June 7, 2018. It clarifies a range of issues raised by the changes to the Albanian Industrial Property Law in force as of March 24, 2017. Some of the most significant changes and clarifications concern the following:
- Clear definition of trademark types and representation requirements
- Literal interpretation of the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations
- Introduction of detailed rules on applications and registration procedures on each type of trademarks and the procedure for the opposition of registration, trademark protection and exemption from protection
- Guidance for the determination of well-known trademarks
The regulation was accompanied be the introduction of official fees. The fee for filing a trademark is now ALL 7,000 and for each additional class ALL 2,500.
For further information, please check the article of the law firm CR Partners hereSource: www.crpartners.al Jul 24, 2018 (Newsletter Issue 13/18)Trade Secrets Regulations Came into ForceOn June 9, 2018, the UK’s Trade Secrets Regulations 2018 (SI 2018 No. 597) came into force. The Trade Secret Regulations implement into UK law the EU Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure ((EU) 2016/943) (“the EU Directive”). Subject to any change of policy by the Government, the Regulations will remain in force in the UK after Brexit.
For more information, please click hereSource: www.limegreenipnews.com Jul 24, 2018 (Newsletter Issue 13/18)
Hague Agreement for Industrial Designs in Force
As of June 13, 2018, Hague System users can now designate the United Kingdom in an international design application.
Source: www.wipo.int
Jul 24, 2018 (Newsletter Issue 13/18)
Official Fees Increased
On July 1, 2018, the Portuguese Institute of Intellectual Property increased the official fees.
The official fee for filing a trademark application is now EUR 126.17 for the first class and EUR 31.99 for each additional class when filing online and EUR 252.33 for the first class and EUR 63.96 for each additional class when filing by paper.
Source: www.inpi.justica.gov.pt
Jun 28, 2018 (Newsletter Issue 12/18)New Industrial Property Act soon in ForceThe Industrial Property Regulations were published in the Namibian Government Gazette on June 1, 2018. By this the new Industrial Property Act No. 1 of 2012 will come into operation on August 1, 2018.
The Act repeals the Trade Marks in South West Africa Act dating back to 1973 and introduces new legislation for patents, industrial designs, trademarks and trade names.
Some of the amendments with regard to trademarks are the following:
- new requirements for assignments and provisions relating to restorations, alterations/amendments, joint ownership, licence contracts and registered users
- possibility to register collective marks,
- non-use cancellation period will shorten from 5 years to 3 years
- trademark infringement proceedings must now be brought before the IP Tribunal
- foreign well-known trademarks will be recognized
- provisions for multi-class applications and applications under the Madrid Protocol and the Banjul Agreement in place
For further information, please check the article of the law firm Adams & Adams hereSource: www.adamsadams.com Jun 28, 2018 (Newsletter Issue 12/18)Important Amendments to IP Law ProposedOn April 10, 2018, the Kenyan authorities published proposed legislation, the Statute Law (Miscellaneous Amendments) Bill, 2018 (the Bill), which provides for amendments to several laws, including the Industrial Property Act 2001 and the Anti-Counterfeiting Act 2008.
The amendments of the Industrial Property Act concern patents, utility models and designs, while the amendments to the Anti-Counterfeit Act 2008 effect trademarks, namely the creation of a dual registration by recordal of the goods.
For further data, please check the information on the Industrial Property Act 2001 and Anti-Counterfeit Act 2008 from Spoor & Fisher.Source: www.spoor.com Jun 28, 2018 (Newsletter Issue 12/18)Revision of Examination Guidelines on Exceptions to Lack of Novelty of DesignThe Cabinet Decision on the Bill for the Act of Partial Revision of the Unfair Competition Prevention Act, etc. on February 27, 2018, was approved and established on May 23, 2018. The Act is to be announced as Act No. 33 and the provision of the revised Design Act Article 4 came into force on June 9, 2018.
Due to this revision, the Examination Guidelines for Designs have been revised. The revised Guidelines are applied to designs being published on or after December 9, 2017, and filed on or after June 9, 2018.
For further information on the revised Examination Guidelines, please click hereSource: www.jpo.go.jp Jun 28, 2018 (Newsletter Issue 12/18)Draft Proposal for New IP Code SubmittedThe Portuguese Government has submitted a proposal for a new Industrial Property Code to the Parliament for approval which will repeal and substitute the most important IP law in force.
The current IP Code was adopted in 2003 (Decree Law 36/2003) and amended in 2008 (Decree Law 143/2008). According to its preamble the draft proposal has the following goals:
a) Implementing the recast of the EU trademark directive - Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015;
b) Implementing the EU trade secrets directive - Directive (EU) 2016/943 of the European Parliament and of the Council of June 8, 2016;
c) “Simplifying and clarifying administrative procedures of granting, maintenance and extinction of industrial property rights”;
d) “Adopting mechanisms to strengthen the rights protection system and to give effectiveness to remedies against infringements”.
The changes provided by the proposal are substantial in number and extension and touch upon all industrial property rights. Some of the most noteworthy amendments proposed on trademarks are the following:
The proposal reflects the provisions of the Directive (EU) 2015/2436 which brings some important innovations into the national law, namely the
- Request of evidence of use as a defence in opposition proceedings
- Intervening rights of proprietor of later registered trademarks as defence in infringement proceedings,
- New right to prevent the entry of infringing goods in transit where such goods come from third countries,
- The rule that the trademark duration shall be counted from the date of filing instead of the granting date.
Further, it has been proposed to maintain the principle of ex-officio examination of relative grounds of refusal according to which the National IP Office has the power to refuse applications on the basis of its own ex-officio examination on grounds of identity or confusingly similarity with prior trademarks.
Additional to that the Government has opted to implement the Directive to its full extent, including article 45 of the Directive (procedure for revocation or declaration of invalidity) the implementation of which was only mandatory by January 14, 2023.
For more information, please check hereSource: www.sgcr.pt Jun 28, 2018 (Newsletter Issue 12/18)
Clarification of Renewal Date
As recently reported in May, all trademark registrations filed prior to the coming into force of Rwanda Law 31/2009 on the Protection of Intellectual Property (the Law) are scheduled for renewal in 2019.
The new Law, which is dated October 26, 2009, came into force following its publication on December 14, 2009. The provisions of the new Law require all trademarks filed under the previous arrangements to be renewed 10 years after the new Law came into force.
Originally, the Registry advised that the renewal date would be October 26, 2019, and for a number of renewals filed early the Registry have issued certificates based on this information.
More recently, the Registry clarified that the renewal due date of old Law cases is December 14, 2019, (based on the date of publication), and have requested that certificates issued with the October date be returned for correction.
Source: www.spoor.com
Jun 28, 2018 (Newsletter Issue 12/18)Issuance of Certificates Electronically The Moroccan Trademark Office (OMPIC) has announced that as of May 28, 2018, trademark registration certificates and renewal certificates will be issued electronically in a digital PDF format bearing the official stamp of OMPIC.
Such a move is aimed at expediting and facilitating the registration process of trademarks, whilst the certificate will have the same legal value for enforcement purpose.
Source: JAH & Co. IP, Qatar Jun 28, 2018 (Newsletter Issue 12/18)Examples of Explanations of Trademark Use PublishedOn May 7, 2018, the Japan Patent Office (JPO) published examples of appropriate and inappropriate explanations of trademark use. It is hoped by the JPO that these examples will help users of the accelerated examination system to submit more appropriate explanations of trademark use.
For more information with examples, please check the newsletter (pages 3-6) of the law firm HARAKENZO hereSource: www.harakenzo.com Jun 28, 2018 (Newsletter Issue 12/18)
Changes to Trademark Rules of Practice To Mandate Electronic Filing Proposed
The United States Patent and Trademark Office (USPTO) proposes to amend the rules of practice in trademark cases and the rules of practice in filings pursuant to the protocol relating to the Madrid Agreement concerning the international registration of marks to mandate electronic filing of trademark applications and submissions associated with trademark applications and registrations, and to require the designation of an email address for receiving USPTO correspondence.
USPTO asks for comments which need to be received by July 30, 2018, to ensure the Office’s consideration. Comments can be submitted to TMFRNotices@uspto.gov
Source: www.uspto.gov
Jun 28, 2018 (Newsletter Issue 12/18)Option of Filing at Two Registries for Trademark ProtectionYemen has been in a civil war since 2015 and is divided in two factions, one based in the capital Sana’a and one based in the port city Aden supporting the government.
On February 20, 2018, the Ministry of Industry and Trade in the interim capital of Aden issued an important declaration announcing the formation of a new trademark office which has started functioning independently from the current Office in Sana’a.
The Ministry informs that the office in Aden provides the following services:
- Receipt of applications for the deposit of trademarks and all applications related to the Law of Trademarks and Geographical Indications No. 23 from 2010.
- Facilitating procedures for all public and private commercial sectors.
- Renewal of commercial records of all legal types.
- Issuing ministerial decisions on the granting of incorporation licenses to companies.
- Registration and accreditation of commercial agencies for individuals or local and foreign companies.
- Granting certificates of registration of trade names.
- All services activities and commercial activity.
The Ministry calls on all commercial sectors to turn to the Ministry Diwan in the interim capital of Aden, with copies of all the documents in their possession about updating their database, which would preserve their rights according to the law.
To ensure protection across all of Yemen, rights holders should file a trademark application with the registry in Sana’a and also have the option to file a second application with the registry in Aden as of February 2018.
Existing marks that were filed or registered in Sana’a prior to February 20, 2018, will be extended from the Sana’a register to the registry in Aden once the prior evidence is received and issued with new trademark certificates reflecting the same registration numbers.
The Ministry has setup a phone number +967 224 1082 in case of enquiries. Also, the first Gazette of the Office has been issued and can be viewed here
It should be noted that third parties may make use of the opportunity to register other trademarks rights in bad faith.
Source: JAH & Co. IP, Qatar Jun 14, 2018 (Newsletter Issue 11/18)New Law on Customs Measures Entered into ForceThe new Law on Customs Measures for Protection of Intellectual Property Rights entered into force in Kosovo on May 23, 2018, introducing important changes intended to align local customs procedures with Regulation (EU) No. 608/2013 concerning customs enforcement of IP rights.
The new law streamlines the simplified procedure for the destruction of counterfeit goods and introduces the small consignments procedure.
According to the amended simplified procedure, rights holders are no longer required to send a cease and desist letter to notify the owner of the goods about the seizure and to seek consent for destruction. Instead, Kosovo Customs will notify both the rights holder and the owner about the detention within one working day.
The rights holder as well as the owner have 10 working days to react.
For more information, please check hereSource: www.petosevic.com Jun 14, 2018 (Newsletter Issue 11/18)Draft Act on Implementation of Trade Secrets Directive The EU Trade Secrets Directive, officially titled “Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure” (the “TSD”), is a legal instrument by the European Union (EU) that is intended to harmonize the currently fragmented laws regarding trade secrets across the EU Member States. While the TSD does not have direct legal effect, each of the Member States is required to transpose the TSD into its respective national laws by June 9, 2018.
On April 19, 2018, Germany has officially published its first draft bill on a new trade secrets act, which is now subject to public consultation and anticipated to be passed in the fall. The German draft bill aims at implementing the TSD at the so-called “minimum harmonization” level and does make much use of the right of the Member States to go beyond such minimum provided by the TSD.
Key aspects of the draft bill:
- Brings the definition of trade secrets to an international standard by switching from the fairly subjective approach that is currently in effect to a more objective approach, which will require trade secrets holders to implement reasonable measures to protect their trade secrets, akin to the concept known under TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights);
- Does away with existing restrictions by codifying commonly accepted permitted uses of trade secrets, e.g., in the context of reverse engineering or whistleblowing;
- Fundamentally improves the rights of trade secrets holders in litigation by introducing more practical measures to ensure secrecy of certain information in litigation, hopefully helping to overcome Germany’s reputation as a “lose the trial or lose the trade secret” jurisdiction; and
- On the remedy side, adds clarity on certain civil remedies like the right to request destruction and recall of infringing products, but, on the other hand, provides for exceptions that may pave the way for the grant of compulsory licenses in certain scenarios; misappropriation of trade secrets remains a criminal offence under German law, however.
For further detailed information, please check hereSource: www.mofo.com Jun 14, 2018 (Newsletter Issue 11/18)
Act on Trade Secrets Passed
The Danish Parliament has passed a new Act on trade secrets which brings together the regulation on trade secrets in Denmark.
The Act implementing the EU Directive on trade secrets has been unanimously enacted by the Danish Parliament. The Act entered into force on June 9, 2018.
The purpose of the new Act is to strengthen the protection of trade secrets, ensure aligned provisions across the EU and bring together the regulation on trade secrets in Denmark.
When the new Act entered into effect, the existing regulation in section 23 on trade secrets in the Danish Marketing Practices Act will be repealed. Employers should therefore consider changing any references to section 23 of the Danish Marketing Practices Act included in template contracts or other documents.
Source: www.norrbomvinding.com
Jun 14, 2018 (Newsletter Issue 11/18)E-Filing of Renewal of Design Registrations Available NowThe Swedish Patent and Registration Office (PRV) has implemented an online service for renewal of design registrations.
The new service saves time and money compared to a paper application. Renewing a design registration electronically costs SEK 2,500 SEK instead of SEK 3,000.
The new service can be accessed hereSource: www.prv.se Jun 14, 2018 (Newsletter Issue 11/18)USPTO Fake Specimen Informant ProgramThe USPTO launched a new pilot program where anyone can submit evidence of false specimens, with certain limitations and criteria. To submit to the new program, concerned individuals, companies, or anyone else may submit an e-mail to the USPTO’s special pilot program email address.
The e-mail must include either:
1. Objective evidence of third party use of the identical image without the mark in question. For example, this could include the page of a stock image website or other website showing the underlying image without the alleged trademark superimposed on the image or
2. The prior registration numbers and/or serial numbers of applications in which all use identical images of objects, mockups of websites, etc., all bearing different marks.
These protest emails must be received no later than the 30th day after publication for opposition.
For more information, please check hereSource: www.gerbenlaw.com Jun 14, 2018 (Newsletter Issue 11/18)
Amendments to IP Law into Force Soon
On May 18, 2018, the Amendment Bill to the Industrial Property Law was published in the Official Federation Gazette. The Amendment Bill changes the trademark law in Mexico. The Bill will be enacted after 60 working days.
Relevant changes are the following:
- “Any person” may register a mark (Article 87). The law previously stated that only “industrialists, traders and service providers” may apply for registration.
- Marks need no longer be visible to be registered (Article 88). A mark need only be perceptible by the senses, and capable of being represented so that it is clear exactly what is being protected.
- Some types of non-traditional marks that were previously denied protection will now be registrable, including sounds, scents, holograms and trade dress (Article 89).
- Descriptive terms, terms in common use and nondistinctive trade dress previously ineligible for registration will now be registrable, based on secondary meaning (Article 90).
- Applicants may now overcome a refusal based on confusing similarity by obtaining the express consent of the prior trademark owner (Article 90).
- The provisions relating to collective marks have been expanded and clarified (Articles 96-97 bis 1).
- Certification marks will now be registrable (Articles 98-98 bis 4).
- Applications for registration must now identify “specific” products or services (Article 113).
- The provisions governing trademark oppositions have been modified (Articles 120-125). The trademark opposition proceeding will include the possibility to file the corresponding evidence by the opponent and the solicitant. Also, IMPI will have to issue a resolution with respect the opposition.
- Registrants must now file a declaration of continued use during the three months after the third anniversary of the registration date (Article 128). The registration will lapse automatically if the declaration is not filed.
- A trademark registration may be declared invalid if it was “obtained in bad faith” (Article 151.VI).
Source: Arochi & Lindner, Mexico
Jun 14, 2018 (Newsletter Issue 11/18)Trademark Cancellation Procedure before BOIP Possible NowThe introduction of a trademarks cancellation and invalidation procedure before the Benelux Office for Intellectual Property (BOIP) came in force on June 1, 2018.
The basis of a cancellation action may be:
1. The trademark has not been genuinely used during the last 5 years since it has been registered.
2. The trademark is not inherently registrable.
3. The trademark is confusingly similar to a prior registered mark.
BOIP’s official fee for filing a cancellation procedure is EUR 1,400. In case the trademark proprietor does not defend himself against the cancellation action or if he loses the procedure and no appeal has been filed, half of the official fees will be reimbursed. Also, more than one ground can be combined in the Benelux cancellation procedure, e.g. the trademark has not been genuinely used during the last 5 years and is not inherently registrable.
For more information, please check hereSource: www.landmark.eu May 22, 2018 (Newsletter Issue 10/18)Revisions to Trademark Examination Manual ExpectedThe Japan Patent Office (JPO) announced that some revisions would be made to the Trademark Examination Manual on April 2, 2018.
Main points of the revision are as follows:
1. Changing the criteria for issuance of an office action relating to intention of use.
2. Revision of the examination criteria for non-traditional trademarks (to make the practice more clear).
3. Revision of treatment of the marks consisting of signs with historic, cultural or traditional value.
4. Revision of the requirement to be an applicant of a regional collective mark.
For more information, please check hereSource: www.limegreenipnews.com by Hogan Lovells May 22, 2018 (Newsletter Issue 10/18)Fast-Track Trademark Registration Available NowRospatent has officially launched a service for fast-track registration of trademarks.
The fast-track option is available to applicants who have ordered and paid for an official trademark search report from Rospatent for all 45 Nice classes.
The official fee for this service is RUB 94,400 (approximately USD 1,500 or EUR 1,200) ; the term is 10 calendar days.
However, for a combined trademark, the fee should be paid separately for each employed element (verbal or visual), which may multiply the fee.
The new service is available for all new and already pending applications and is intended to shorten the processing time until registration.
For further information, please click hereSource: www.ilnipinsider.com May 22, 2018 (Newsletter Issue 10/18)
Apostille Convention into Force Now
On May 7, 2018, the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention) entered into force for Bolivia. Bolivia had acceded to the Apostille Convention on September 6, 2017. The Apostille Convention currently has 115 Contracting Parties.
Source: www.hcch.net
May 22, 2018 (Newsletter Issue 10/18)New Finnish Trademarks Act ProposedThe Finnish Ministry of Economic Affairs and Employment working group in 2016 for a total revision of the Trademarks Act. The working group submitted its draft Government Proposal for a new Trademarks Act to the ministry on March 19, 2018. The draft proposal is available on the website of the Ministry of Economic Affairs and Employment (in Finnish). The new Trademarks Act will implement the revised Trademark Directive and enforce the Singapore Treaty on the Law of Trademarks. A large amount of substantive and procedural changes will be introduced.
The draft Government Proposal also introduces amendments to related laws, particularly to the Company Names Act. In addition, the new act would result in the annulment of the current Act on Collective Marks, while provisions concerning collective marks and control marks would be included in the new act.
Some of the proposals are the following:
- Introduction of an administrative procedure for the revocation and declaration of invalidity of a trademark parallel to the current court proceedings.
- Revocation of company names within corresponding administrative proceedings in addition to current court proceedings.
- Holders of trademark registrations applied for before October 1, 2012, for class headings will need to specify their list of goods and services to ensure that it follows the new classification provisions.
- Further notable changes are the waiver of the graphical representation requirement, the introduction of the exclusive right of a Finnish trademark owner in transit situations, and the introduction of a clear provision criminalizing infringement of EU trademarks (typically counterfeits).
The draft Government Proposal will be handed over to Parliament during the autumn session of 2018, and the new Trademarks Act is intended to enter into force by January 2019.
For further information, please check hereSource: www.borenius.com May 08, 2018 (Newsletter Issue 9/18)Transliteration Requirement for Latin Script Marks RescindedThe Iraqi Trademarks Office announced that trademark applications may now be filed in Latin script without having to submit the Arabic transliteration of the mark.
This update rescinds the previous registration requirement whereby the addition of Arabic transliteration; i.e. the way the Latin word(s) is spelled out to a Latin mark was a requirement, which provides for the protection of the transliteration of a registered mark without having to file a separate application for same.
However, it is advisable to register the transliteration of the mark in Arabic as a separate registration to avoid any problems that might arise when it comes to enforcing trademark rights against third parties using or attempting to register confusingly similar Arabic transliterations.
Source: JAH & Co. IP, Qatar May 08, 2018 (Newsletter Issue 9/18)
Accession to Locarno Classification
Iran acceded to the Locarno Agreement, an international classification for industrial designs, on April 12, 2018.
The said agreement will enter into force with respect to Iran on July 12, 2018.
Source: www.wipo.int
May 08, 2018 (Newsletter Issue 9/18)Medicine Registration Regulation AmendedIn accordance with the Decree of the Cabinet of Ministers of the Republic of Uzbekistan of March 23, 2018, No. 213 new Regulations on the procedure of the State registration of medicinal products, active pharmaceutical substances (APIs) and medical devices have been published and have come into force.
According to said Regulations the time frame of conducting the procedure of registration of medicinal products and medical devices is reduced from 180 workdays to 120-155 days depending on type of the product and the time frame of conducting the procedure of registration of APIs is reduced from 180 workdays till 50 days. Also the structures of the registration dossiers on medicinal product, APIs and medical device are heavily modified.
The validity period of the Certificate about the state registration has not been changed and constitutes 5 years, after that it is necessary to renew it each time for the next 5 years.
For further information on the requirements and time frames, please check Registration of medicinal products in Uzbekistan or Registration of pharmaceutical ingredients in Uzbekistan.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine May 08, 2018 (Newsletter Issue 9/18)
Regulation on Patents, Utility Models and Designs Amended
In the Official Gazette of March 13, 2018, edition some amendments to the current Mexican Industrial Property Law have been published. All changes entered in force on April 27, 2018.
Some amendments affect the current regulation concerning patents, utility models and designs. The most important changes are the following:
- Utility Model and Industrial Design applications will now be published as soon as the formal examination is completed. Divisional patent applications will also be published. Under the current law publication is not carried out for such type of applications.
- The timeframe in which third parties may file relevant documents against Novelty or Inventive Activity of a given published Patent application is shortened, now, it will be only of two months after the publication takes place (the current period is of 6 months).
- The lifetime of a Industrial Designs is extended up to 25 years in which the Industrial Design will have to be renewed for periods of 5 years.
- Industrial designs already granted may extend their protection for an additional 10 years period once the currently 15 years has expired in order to totalize a maximum of 25 years of protection.
- Industrial Design applications still pending may be eligible for adopting these reforms, provided that the corresponding petition is filed before the Mexican Patent Office within 30 working days after the entry into force of the above mentioned reforms. The modifications to the Industrial Designs prosecution has the aim to prepare Mexico into an eventual adhesion to the Hague System.
Source: www.herreroyasociados.com
May 08, 2018 (Newsletter Issue 9/18)Online Services EnhancedThe Trademark Office (TMO) of UAE launched an electronic searching system with respect to trademarks filed or registered in the UAE on April 19, 2018. The official fees to be paid to conduct the searches remain the same; however, the search request can be made online only by agents. These e-services, among others provided by the TMO, replace previous procedures that required the submission of documents and applications in person.
Also, the Dubai Department of Economic Development (DED) has launched an online gateway for the registration of registered trademarks. The online portal supports DED in routine checks for any counterfeit products and informs the trademark owners/agents about the detected infringements. However, brand owners are still obliged to file official complaints with the DED in order to take action against any infringing parties.
Source: JAH & Co. IP, Qatar May 08, 2018 (Newsletter Issue 9/18)Renewal Action and DeadlinesExisting trademark registrations under Rwanda Law 31/2009 of October 26, 2009, effective from December 14, 2009, on Protection of Intellectual Property are scheduled for renewal in 2019. The Law states that existing registrations can be renewed within ten years of the entry into force of the Law, i.e. by December 14, 2019.
In Rwanda, there are no lapsed trademarks because it is the first time that a trademark renewal action has been introduced under the 2009 IP Law and it is advised that the renewal application should be filed well before the deadline for a smoother processing of the same.
The documents required for the renewal of trademark registrations are: a notarized Power of attorney and a simple copy of the certificate of registration. The time frame to receive the renewal certificate is 2 to 4 weeks from filing the renewal application.
Source: JAH & Co. IP, Qatar May 08, 2018 (Newsletter Issue 9/18)Opposition Term ChangedThe term for filing an opposition to an application for a trademark or a geographical indication has been increased from 30 days to 60 days (non-extendable).
The term within which the applicant for registration must respond is 14 days. A power of attorney must be submitted at the time of filing with a possible extension term of 7 days for late submission of POA.
Source: JAH & Co. IP, Qatar Apr 26, 2018 (Newsletter Issue 8/18)IP Law Reform Package ApprovedThe Mexican Senate approved a package of reforms to the provisions of the “Ley de la Propiedad Industrial” (IP Law) comprising important changes to the protection of trademarks in Mexico. Some of the important changes are as follows:
Trademark Use
It will be required to declare actual and effective use of a trademark three years from registration of a mark. If this declaration has not been made, the registration will be considered as lapsed.
It will also be required for renewals to declare the actual and effective use of the trademark.
Nullity action based on bad faith
Nullity claims based on bad faith will no longer be restricted to registrants who are agents, representatives, users or distributors of the owner. It will be sufficient that there has been any kind of direct or indirect relationship between the bad faith registrant and the owner of the prior rights.
Non-traditional trademarks
Holographic signs, sound and smell marks will be registerable.
The reform package will soon be published within in the Official Gazette of the Federation of Mexico. It is expected that the reforms will enter into force 60 days after its publication.
For further information, please click hereSource: www.hoganlovells.com Apr 26, 2018 (Newsletter Issue 8/18)
National Intellectual Property Policy 2018 Launched
The Ministry of Economic Affairs officially launched the National Intellectual Property Policy (NIPP) 2018 to provide intellectual property (IP) rights to promote creativity and innovation for social, cultural and economic development. The policy was approved during the 151st session of the Cabinet held on February 13, 2018.
NIPP focuses on seven strategic objectives that will be implemented through formulation of strategies and annual action plans. Changes in a number of areas are planned. Changes to legislative frameworks on the protection of intellectual property rights that are well suited to socio-economic conditions of the country, building collaboration between the industry and R&D institutions to engage in conducting joint researches, framing of appropriate protection regimes for traditional knowledge, traditional culture expressions and genetic resources that concerns the indigenous communities and greater participation at the multilateral level to implicate and preserve national interests on intellectual property, among others.
Further developments will be reported.
Source: www.moea.gov.bt
Apr 26, 2018 (Newsletter Issue 8/18)
Accession to Madrid Protocol
On March 26, 2018, the Government of the Islamic Republic of Afghanistan deposited its instrument of accession to the Madrid Protocol, making Afghanistan the 101st member of the Madrid System. The Protocol will enter into force for Afghanistan on June 26, 2018.
Starting June 26, local brand owners in Afghanistan can begin using the Madrid System to protect their marks in the 116 territories of the System’s other 100 members by filing a single international application and paying a single set of fees.
Source: www.wipo.int
Apr 26, 2018 (Newsletter Issue 8/18)UK Residents and Entities no Longer Eligible to Register .eu Domains post-BrexitOn March 28 2018, the Directorate-General for Communications Networks, Content and Technology, issued the following Notice to Stakeholders:
As of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date.
For further information, please see the Notice hereSource: www.ec.europa.eu Apr 26, 2018 (Newsletter Issue 8/18)
Accession of Geneva Act of the Lisbon Agreement
WIPO informed that Cambodia is the first state party to join the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act"). The Government of Cambodia deposited its instrument of accession to the Geneva Act on March 9, 2018.
The Geneva Act is designed to help ensure that producers of quality products linked to origin are able protect the distinctive designations of their products in multiple jurisdictions, either as appellations of origin or geographical indications, through a single application with WIPO and the payment of one set of fees.
The Geneva Act will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.
Source: www.wipo.int
Apr 26, 2018 (Newsletter Issue 8/18)Benelux Trademark Regime to Change SoonThe Benelux Convention on Intellectual Property (BCIP) will be amended by two protocols which will enter into force on June 1, 2018.
Centralisation of appeals at the Benelux Court of Justice (BCJ)
Until now appeals from decisions of the BOIP in opposition cases were brought before the courts of appeal of The Hague, Brussels or Luxembourg which could result in different outcomes.
As per June 1, 2018, all appeals from decisions of the BOIP (refusals, oppositions etc.) have to be brought before the Benelux Court of Justice (BCJ). This Court established a new chamber consisting of judges from national courts of the Member States of the Benelux. It is expected that change will result in a more consistent and harmonious case law.
Opening up oppositions to holders of well know trademark
With regard to opposition proceedings, the BCIP will also allow holders of well known trademarks to oppose to the registration of younger marks. Currently, opposition can only be based on an identical trademark, a confusingly similar trademark or a well-known mark.
Invalidation or cancellation actions before the BOIP
As per June 1, 2018, it will be possible to seek invalidation or cancellation of registered marks with the BOIP in administrative procedures. It will no longer be required to initiate judicial proceedings.
For further information, please check here
Source: De Clercq & Partners, Belgium and Arnold + Siedsma, Netherlands Apr 11, 2018 (Newsletter Issue 7/18)
Apostille Convention Entered into Force
On March 30, 2018, the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention) entered into force for Tunisia.
Tunisia had acceded to the Apostille Convention on July 10, 2017.
The Government of Tunisia has informed the Ministry of Foreign Affairs of the Netherlands (i.e. the Depositary) that a Competent Authority under Article 6 of the Apostille Convention will be designated shortly.
Source: www.hcch.net
Apr 11, 2018 (Newsletter Issue 7/18)15 Percent VAT on Official IP FeesThe Department of Patents, Designs and Trademarks, Bangladesh (DPDT) published an official notification dated on March 12, 2018, imposing 15% Value Added Tax (VAT) on all Government Fees i.e. official fees, on all Intellectual Property matters in Bangladesh.
The Official Notification of the DPDT can be accessed here
Source: S. S. Rana & Co., India Apr 11, 2018 (Newsletter Issue 7/18)Changes to Trademark Registration ProceduresIn pursuant to Ministerial resolution No. 20 dated March 18, 2018, in regard to setting up deadlines (time frames) for the prosecution of trademarks it has been decided that:
Yemen issued a Ministerial Decree No. 20 dated March 18, 2018, regarding changes to the registration procedures of trademarks. The following new regulations apply:
1. Trademark applications suspended for 12 consecutive months from filing date by the applicant or his agent due to non-payment of publication fees or failure in completing filing formalities or any other reason caused by the applicant shall be considered abandoned and as never existed.
2. Accepted trademarks with conditions or rejected trademarks by the Registrar or Appeals Committee which the applicant or his agent fails to complete registration process within 12 consecutive months from the date of decision shall be considered abandoned and as never existed.
3. The applicant’s or his agent’s failure to complete publication formalities of an accepted trademark in sixty days from notification of the acceptance will result in the abandonment of trademark which will be considered abandoned and as never existed.
4. The applicant of a trademark application will be given ninety days from expiry of opposition term to receive the opposition plea in order to file a response to same; otherwise the trademark application will be considered abandoned and as never existed.
This decision is applied to all pending applications filed before or after the date of this decision which has come into effect on March 18, 2018.
Source: JAH & Co. IP, Qatar Apr 11, 2018 (Newsletter Issue 7/18)Documentation Requirements for E-Filing SystemAs of April 1, 2018, the Kuwait Trademark Office has upgraded its system and undertaken the necessary procedures towards switching filing trademarks to a completely online system.
The documentary requirements will now be fulfilled online by uploading the same and originals of which should be submitted for verification within three months though the Kuwaiti Trademark Registrar is not strict in applying this deadline.
Under this new system, the goods/services should be selected from the Nice Classification (11th edition), noting that there are no additional costs for the selection of a large number of goods or services to be included in the trademark application. Class headings are no longer applicable.
The following copies of the application document should be available at the time of filing:
- A PDF copy of power of attorney legalised up to a Kuwaiti Consulate abroad or in its absence any Arab consulate available in home country of applicant company; the original of which should be submitted within three months.
- A simple PDF copy of the certificate of incorporation or an extract of the applicant entry in the commercial register or any equivalent document attesting to the legal existence of the applicant company (neither legalisation nor original is required).
- A certified copy of the corresponding home or foreign registration/application (priority document) legalised up to a Kuwaiti Consulate abroad or in its absence any Arab consulate available in home country of applicant company in case of claiming priority; the original of which should be submitted within three months.
Source: JAH & Co. IP, Qatar Apr 11, 2018 (Newsletter Issue 7/18)Fifth Civil Court of First Instance to Handle IP CasesThe Syrian Ministry of Justice has recently announced that all IP related legal cases should be handled by the Fifth Civil Court of First Instance in lieu of the FIRST Commercial Court of First Instance.
This Ministerial decision was stipulated on February 24, 2018, in order to organise the back log and work load of legal cases being currently handled by courts in Syria. The Fifth Civil Court of First Instance will handle appeals against trademark registrar’s refusal decisions, oppositions against registration of trademarks, counter oppositions cases as well as infringement and cancellation actions.
Source: JAH & Co. IP, Qatar Apr 11, 2018 (Newsletter Issue 7/18)Dilemma over Non-Use Grace Periods The IP-related provisions of the EU-Ukraine Association Agreement, signed and ratified by Ukraine in 2014, came into force on September 1, 2017. New rules regulating the non-use grace period for trademarks were thereby introduced. Where the existing trademark law provides for a 3-year non-use grace period, Article 198 of the Agreement sets forth the 5-year non-use grace period.
However, Ukraine has not adopted any laws that would implement such provisions in the national legislation yet.
Consequently, Ukrainian courts are facing a dilemma in non-use cancellation actions as to what the applicable grace period really is. This raises the question of direct applicability of the EU-Ukraine Association Agreement provisions.
Recently, in a court ruling by the Commercial Court of Kyiv the judge effectively applied a 5-year non-use grace period, as provided for under the Association Agreement (Art. 198), and rejected the non-use cancellation action, which was based on the 3-year grace period, as per Ukrainian Trademark Law. The court held that the EU-Ukraine Association Agreement is a binding international agreement, thus its provisions should prevail if they differ from the rules provided by the Ukrainian law. The judge argued that, since Art. 198 provides for a different grace period, the Agreement’s provisions may be directly applicable. The ruling also emphasizes that the Association Agreement does not foresee any particular means of implementation of these provisions in the Ukrainian national law.
For more information, please see hereSource: www.petosevic.com Apr 11, 2018 (Newsletter Issue 7/18)New Trademark Law DraftedOn January 12, 2018, the Romanian PTO published the first draft of the new trademark law, aimed at transposing the Directive (EU) 2015/2436 into national legislation. The most important changes are listed below.
Absolute Grounds for Refusal or Invalidity
The draft law extends the absolute grounds for trademark refusal or invalidity by adding the words “or another characteristic” to the relevant article in the law, meaning that now the restrictions apply not only to shape signs but to other types of signs as well. Namely, according to the draft law, signs can be refused if they consist exclusively of the shape, or another characteristic, which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives substantial value to the goods.
Earlier Rights
The draft law widens the scope of earlier rights to include traditional terms, guaranteed traditional specialties and plant variety rights, along with the already covered designations of origin and geographical indications.
Trademark Infringement
The draft law broadens the concept of trademark infringement by establishing additional uses of a similar or identical sign that may be prohibited by the trademark owner and are not specified in the current trademark law, namely:
- Use of a sign as a company name or as part of a company name (however, the draft law does not clarify, like Directive (EU) 2015/2436 does, that in order to be prohibited, such use has to be made for the purposes of distinguishing goods or services);
- Use of a sign in comparative advertising in a way contrary to the provisions of the Misleading and Comparative Advertising Act No. 158/2008; and
- Use of a sign on packaging, labels, tags, security or authenticity features or devices, and placing these on the market.
Further changes concern the goods in transit and the revocation and declaration of invalidity.
For more information, please see here Apr 11, 2018 (Newsletter Issue 7/18)
Guidebook on Regional Collective Trademarks
The Japan Patent Office (JPO) has published the '2018 Guidebook on Regional Collective Trademarks.'
The concept behind the guidebook is a single volume that can fully explain regional collective trademarks. It includes an outline of the regional collective trademark system, Q&A, use examples, and support measures etc. carried out by the JPO. The guidebook also contains a list of all 621 presently registered regional collective trademarks, grouped by product.
Source: www.harakenzo.com
Apr 11, 2018 (Newsletter Issue 7/18)
Method of Counting Similar Groupings Changed
"Similar groupings" refers to the universal 5-character alphanumeric codes assigned to goods and services. The goods and services contained in a group are, as a rule, inferred to be similar in nature. Formerly, certain goods and services that appear in multiple groups weree counted only as a single group, with a maximum of seven groups allowed. If the number of groups surpasses seven, a notification of reasons for refusal was issued under principal paragraph of Article 3(1) of the Trademark law.
Following revision, the number of groups is counted in which a given group or service appears. The maximum number of groups that can appear in a single class is set to 22. There is no change regarding the handling of services such as retail. The announcement and implementation of the revised method of counting groups took place on April 2, 2018, and the change applies to all pending applications.
Source: www.harakenzo.com
Apr 11, 2018 (Newsletter Issue 7/18)Income Tax Law on IP Assets in Luxembourg Soon to be AmendedThe bill of Law n°7163 implementing the new tax regime applicable to intellectual property assets (the “new IP regime”) was approved by a first constitutional vote on 22 March 2018 and should be exempt from the second constitutional vote.
It is therefore likely that the new IP regime set out in article 50ter of the Luxembourg Income Tax Law (“LITL”) will enter into force from the start of the 2018 tax year. The new IP regime will apply to any Luxembourg-resident taxpayer carrying out a business activity in Luxembourg.
It should be noted that the former IP regime will still apply to IP income of Luxembourg entities received between 1 July 2016 and 31 December 2017 on IP rights developed or purchased before 1 July 2016. As from 1 January 2018, the transitional provisions have been repealed and replaced by the new article 50ter of LITL.
More information can be seen hereSource: www.cms.law Mar 29, 2018 (Newsletter Issue 6/18)
Hague Agreement for Industrial Designs Ratified
The United Kingdom has deposited the instrument of ratification needed to join the Hague System for the international registration of industrial designs.
The Agreement will come into effect on June 13, 2018.
Source: www.gov.uk
Mar 29, 2018 (Newsletter Issue 6/18)Trademark Examination Guidelines and Classification System AmendedThe Korean Intellectual Property Office (KIPO) recently amended its trademark examination guidelines and classification system, effective as of January 1, 2018. The amendments are summarized below.
1. Distinctiveness of 3D Trademarks
The guidelines previously stated that a 3D shape essentially functions as a design and not a source identifier, and that secondary meaning is required to obtain a trademark registration for a 3D shape unless it is combined with a distinctive element. Accordingly, KIPO examiners normally rejected applications for a 3D shape, even if the shape had no intrinsic connection to the designated goods or services.
The above guideline has been replaced with the following guidelines for determining the distinctiveness of 3D marks:
- If a 3D trademark is for the product configuration itself, the distinctiveness of such a mark cannot be admitted except in combination with a trademark element that is distinctive.
- However, if a 3D mark is not for the shape or form of the product itself, and the shape is not common but very unique for such products or services (e.g., a star-shaped bottle for wine), distinctiveness can be admitted.
2. Distinctiveness of University Names
The following guideline has been introduced for determining the distinctiveness of a university name:
A mark which consists only of a famous geographical indication and the term "university" is not distinctive. However, if the combination mark is recognized as a trademark which indicates a specific source in an "education related field," then depending on the length of time the mark has been in use, the extent to which it has been advertised, and the size and nature of the university, secondary meaning can be admitted. The new guideline also states that "education related field" covers not only the provision of lectures, but also other aspects of a university's operations, such as clothing sales, food sales, etc.
3. Change to the Goods Classification System
Some goods were reclassified into other classes to better reflect current market situations and international standards.
The most notable change is that "health functional foods" are now classified in class 5, which is in line with the Nice Classification system, while they were formerly classified based on their ingredients. (Note: This does not affect "health supplementing foods" which are categorized as "general foods" still classified based on their main ingredients.)
More information can be accessed hereSource: www.kimchang.com Mar 29, 2018 (Newsletter Issue 6/18)
Design Examination Guidelines Amended
The Korean Intellectual Property Office (KIPO) recently amended its design examination guidelines, effective January 1, 2018. The most noteworthy amendments are summarized below.
1. Expanding the Scope of Integrity of Partial Designs
If two or more parts which are physically separated in one partial design application are expressed, they are generally rejected as a violation of the "one design - one application" rule. However, if their creative integrity is recognized, the design application can be registered as one design. According to the amended guidelines, the intention of the creator is also considered when determining whether or not the parts physically separated in one partial design application constitute one design. Further, a design will be considered to have configurational integrity if the parts have relevance in being recognized as a single creative unit, and to have functional integrity if the parts have relevance in carrying out the same function.
2. "Fourth Industrial Revolution" Design Applications Are Now Allowed Expedited Examination
The examination of design applications generally takes around 7~9 months from the application filing date. An applicant can shorten the examination period by requesting expedited examination, which if granted takes around 2~4 months. However, expedited examination is only allowed in certain circumstances set forth in the Design Protection Act Enforcement Decree. Design applications directly related to the "fourth industrial revolution," such as artificial intelligence or Internet of Things, have been added as a subject for priority examination in the Design Protection Act Enforcement Decree, and the design examination guidelines have been amended accordingly.
3. Unclaimed Design Elements Must Be Registrable Even For Partial Designs
The amended guidelines now specify that when determining if a design is unregistrable, the unclaimed parts as well as the claimed parts of a partial design should be taken into account, and reference drawings should be considered. Thus, even if only otherwise-registrable portions of a design are being claimed as a partial design, if unclaimed portions are unregistrable (e.g., for offending public morals), the partial design cannot be registered.
Source: www.kimchang.com
Mar 29, 2018 (Newsletter Issue 6/18)
Registry Payment Procedures Amended
The Ministry of Finance recently announced a change in the payment procedure for all Public Departments including the Industrial Property Office pursuant to Executive Decree No. 21/97, together with Executive Decree 30/11.
Effective from March 1, 2018, all payments relating to industrial property deeds must be made at the Tax Office, into the sole treasury account, on the presentation of a payment note issued by the Industrial Property Office. The Tax Office will then issue a revenue collection document, which must be submitted to the Industrial Property Office. In the circumstances, any person interested in making payment of official fees will first need to obtain a payment note from the Industrial Property Office, then make payment of the official fees at the Tax Office and, thereafter, submit the application together with the stamped payment note and revenue collection document to the Industrial Property Office.
The payment note must be stamped by the Tax Office and submitted to the Industrial Property Office, together with the revenue collection document, on the same date on which payment is made. Alternatively, the applicant will have 24 hours from the date on which the payment note is issued within which to submit its application to the Industrial Property Office failing which, additional costs will be incurred.
Source: www.adamsadams.com
Mar 29, 2018 (Newsletter Issue 6/18)
Appeals Procedure Changed
The new Director General of the Ethiopian registry has taken steps to ensure that appeals such as those dealing with the refusal of an application now take the form of a formal court hearing rather than a simple review of written submissions.
This change is in line with a 2012 government directive. This means that practitioners will now need to appear in person. It also means that the tribunal might invite other parties, such as the owner of a cited trade mark, to submit evidence or observations. It is expected that this step will result in more considered decisions.
Source: www.spoor.com
Mar 29, 2018 (Newsletter Issue 6/18)
Irish Domain Rules Changed
The .ie ccTLD registration process has been liberalised. Before there were very restrictive policies governing eligibility for registration.
As of March 21, 2018, the eligibility rules for the registration of domain names in this ccTLD have been relaxed, making the registration of the .ie domain name much easier. Most rules have been deleted, but it is still necessary to provide evidence of a clear nexus with Ireland and its own identity. Domains are now allocated on a first come, first served basis.
Source: www.spoor.com
Mar 29, 2018 (Newsletter Issue 6/18)
Civil, Commercial and Administrative Procedure Codes Amended
Significant amendments to three Ukrainian codes governing judicial dispute resolution process — the Civil, the Commercial, and the Administrative Procedure Code, entered into force on December 15, 2017, the same day the reorganized Supreme Court started operating. In general, the amendments aim to modernise the Ukrainian judicial system and increase its efficiency. The amendments also introduce electronic submission of evidence and encourage electronic communication between the parties and courts. Some of the most important changes are described below.
Simplified proceedings
Minor disputes, such as those in which the value of the dispute does not exceed EUR 5,310 (USD 6,525), can now be resolved in simplified proceedings, previously available for a limited number of very specific situations.
Right of audience
Both individuals and legal entities were previously able to appoint anyone as a representative before the court, as long as the representative had a proper authorization. Even a law degree was not required to represent in court. Now, individuals may either appear before a court themselves or be represented by an attorney at law.
Filing of proof
All available proof on which an action or a defensive plea is based should now be submitted together with the corresponding action or defensive plea. Before the changes took effect, parties were able to file proof subsequently, which is no longer the case.
Judge-facilitated dispute settlement
In an attempt to settle disputes amicably and avoid trials, a judge-facilitated settlement is now possible, with a judge and parties meeting either together or with a judge meeting each party separately. The information disclosed during the meetings will be confidential.
Independent experts
A court can now appoint an independent expert to assist the court in interpreting legal provisions if the law does not directly address the issue at hand and the court has to apply statutory or legal analogy. Independent experts can also help with interpreting foreign law, but the court can decide whether to accept the interpretation.
Injunctive relief and international arbitration
State courts are now able to grant an injunction in cases considered by an international arbitral tribunal.
Cassation appeals
The number of cases in which an appeal before the Ukrainian Supreme Court can be filed is now reduced. As a general rule, appeals will not be accepted by the Supreme Court in petty dispute proceedings unless, for example, the court of first instance erred in qualifying the dispute as petty or when the case is of fundamental importance for the establishment of uniform judicial practice.
Abuse of procedural rights
All three amended codes now specify which activities will be regarded as abuse of procedural rights. These activities include filing an obviously groundless action, filing several actions against the same defendant on the same grounds and with the same claims, and appealing judicial decisions that are not eligible for an appeal, to name only a few.
Source: www.petosevic.com
Mar 29, 2018 (Newsletter Issue 6/18)Online Database LaunchedOn December 27, 2017, the Kosovo Industrial Property Office (IPO) published its online trademark and patent database, allowing users to browse through patent and trademark applications and registrations. The database is available in the Albanian language only.
Although the IPO made every effort to complete the database with all existing information, the IPO highlighted that the database should only be used for guiding purposes.Source: www.petosevic.com Mar 29, 2018 (Newsletter Issue 6/18)
Key Trademark Law Changes Drafted
The Australian Government recently released the Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill (the Bill).
The Bill results from a comprehensive review of the Australian Intellectual Property system and the release of the Australian Government Productivity Commission’s Report on Intellectual Property Arrangements in Australia.
The Bill is the first move by the Australian Government to adopt the recommendations of the Productivity Commission. From the trade mark perspective, there are two key law changes that the Bill proposes to introduce:
1. The reduction of the grace period for non-use actions from five years to three years – currently, an Australian trade mark must have been on the Register for five years before it is vulnerable to attack for non-use. The Bill, if enacted, will reduce this period to three years.
2. Ensuring that parallel imports of marked goods do not infringe registered Australian trademarks – there has been some debate over the years as to whether the import of goods genuinely marked by the owner and then imported into Australia would infringe an Australian trade mark registration. The Australian Courts have been clear in recent times that such importation does not constitute trade mark infringement and the Bill will ensure that the Australian Trade Marks Act clearly aligns with this position.
It is expected that the Bill is finalised by May/June 2018.
In addition, it is widely expected that a ‘Part 2’ Bill will be put forward before the end of 2018, which will introduce further changes and adoptions from the Productivity Commission’s Report.
The ‘Part 2’ Bill will almost certainly include provisions that will allow the holder of an International Registration designating Australia to file divisional applications (currently available only to the holder of a national Australian application) – this has been listed as a priority by Intellectual Property Australia.
Source: www.spruson.com
Mar 29, 2018 (Newsletter Issue 6/18)SIPO Takes Over Administration and Enforcement of TrademarksOn March 17, 2018, National People’s Congress (NPC) approved the proposal made by the State Council, China’s chief administrative authority, to restructure the administrative organs under the State Council.
The following restructuring is for example planned:
- The State Intellectual Property Office (SIPO) will take over examination and registration of trademarks from the China Trademark Office (CTMO) and the Trademark Review and Adjudicative Board (TRAB).
- SIPO will also take over registration and administration of geographic indicators from the General Administration of Quality Supervision, Inspection and Quarantine.
- SIPO will have additional responsibility to guide the enforcement of trademarks and patents but will not handle such enforcement on a daily basis.
- SIPO will be subordinate to a new State Administration for Market Supervision (SAMS). SAMS will have broad power including but not limited to enforcement of patents and trademarks. Hence SAMS’s enforcement teams will be in charge of trademark and patent enforcement with guidance from SIPO.
One purpose for the above restructuring is to consolidate government resources in administering and enforcing IPRs and to make the administration more efficient. It is not known how long the restructuring will take to complete. There are open issues about the new structure. For example, it is not clear whether SIPO will take over the administration and/or enforcement of copyright from the National Copyright Administration.
For more information, please see hereSource: www.hoganlovells.com Mar 15, 2018 (Newsletter Issue 5/18)
Final Revisions of IP Bills
The pending IP bills in Myanmar on copyright, trademarks, industrial designs, and patents were passed by the National Parliament (Amyotha Hluttaw) on February 15, 2018.
This development signals the movement of the bills from the Myanmar National Parliament to the People’s Parliament (Pyithu Hluttaw), where the final revisions to the bills may be made.
This is the furthest stage to which the four IP bills have advanced in the legislative process since they were first announced to the public
Source: www.bakermckenzie.com
Mar 15, 2018 (Newsletter Issue 5/18)IP Regulations Amended The Intellectual Property Office of New Zealand (IPONZ) informs that Amendments to the Patents Regulations 2014, the Trade Mark Regulations 2003, the Trade Marks (International Registration) Regulations 2012, and the Design Regulations 1954 have been notified in the New Zealand Gazette as of March 8, 2018.
These amendments will effect a number of changes to the patents, trademark and design regulations, including:
- Permitting an address for service to be in either New Zealand or Australia;
- Amendments to micro-organism deposit requirements for patent applications;
- Amendments to divisional patent applications;
- Changes to the extension of time provisions for filing a counterstatement in patent revocation proceedings.
The changes to the address for service requirements give effect to the Single Economic Market agenda announced by New Zealand and Australia in 2009.
For more information, please click hereSource: www.iponz.govt.nz Mar 15, 2018 (Newsletter Issue 5/18)Further IP Tribunal EstablishedOn March 1, 2018, Changsha Intellectual Property Tribunal was established in Changsha, capital of Hunan Province.
With its establishment, China now possesses a total of three Intellectual Property Courts (in Beijing, Guangzhou and Shanghai) and 15 Intellectual Property Tribunals (in Tianjin, Chengdu, Shenzhen, Wuhan, Nanjing, Hangzhou, Suzhou, Hefei, Ningbo, Fuzhou, Jinan, Qingdao, Xi’an, Zhengzhou and Changsha).
Changsha Intellectual will have jurisdiction over the following intellectual property cases:
1. First instance IP civil cases or administrative cases related to patents, new plant varieties, layout-designs of integrated circuits, technical secrets, computer software, determination of well-known trademarks and monopoly disputes that take place in Human Province;
2. First instance IP civil cases or administrative cases related to trademarks, copyrights, unfair com-petitions, technical contract disputes that take place in Changsha city.
3. Cases of appeals against the decision of first instance IP criminal cases made by the basic-level people’s court in Changsha city.
Source: CHOFN Intellectual Property, China
Mar 15, 2018 (Newsletter Issue 5/18)Extracts of Register of Copyrights via EmailOn February 1, 2018, the Copyright Office has published its decision to transmit the Extracts of Register of Copyrights to all the registered users through email to enhance efficiency. This arrangement is in-addition to the current practice of transmission of Extracts of Register of Copyrights through post. The arrangement has immediate effect.
See the official notice here
Source: S. S. Rana & Co., India Mar 15, 2018 (Newsletter Issue 5/18)Compulsory Mediation Procedure in IP Infringements SoonThe Law No. 4512/2018 on Arrangements for the Implementation of the Structural Reforms of the Economic Adjustment Programmes and Other Provisions was published in the Official Gazette on January 17, 2018, and entered into force on the same day, except as otherwise specified in different provisions of this Law.
The Law introduces inter alia in its Chapter B, Articles 178 to 206, the compulsory mediation procedure in civil and commercial matters. Article 182, paragraph f, especially provides that the disputes arising from the infringement of trademarks, patents and industrial designs be resolved by mediation before going to court for judicial proceedings. The mediation process will be applicable as of October 17, 2018.Source: www.wipo.int Mar 15, 2018 (Newsletter Issue 5/18)
Electronic Management for New Trademarks and Register Changes
The Swiss Federal Institute of Intellectual Property (IPI) informs that the Trademark Division will introduce the electronic management for Swiss trademarks as from March 2018.
This applies to all new trademark applications (indicated by the application numbers >70,000) as well as all register changes to registered trademarks.
Some of the minor changes can be seen below:
- Express fees cannot be paid online anymore.
- Payment requests are only sent to the address of service, it is no longer possible to require their sending to a special "bill recipient".
- New bank account (IBAN CH31 0483 5146 2769 0100 0, SWIFT CRESCHZZ80A, at Credit Suisse)
- Regarding the registry statements and priority documents:
1) The structure of the register extracts is no longer exactly the same. There is no longer a status at the time of registration;
2) Register statements and priority documents which do not require to be certified are now sent electronically by e-mail.
- The owner of the protected rights registered in the register will be informed if the register has changed due to the transfer of the intellectual property right or the registration of a licence.
Source: www.ige.ch
Mar 15, 2018 (Newsletter Issue 5/18)Amendments to IP Code ProposedOn December 22, 2017, the Intellectual Property Office of the Philippines (IPOPHL) has submitted to the Philippine Congress its proposed amendments to the IP Code (Republic Act No. 8293).
For further information, please see the article of our Gold Country Index Partner Hechanova & Co. here
Source: Hechanova & Co. Inc., Philippines Feb 28, 2018 (Newsletter Issue 4/18)Consultation on Changes to UK Trademark LawThe UK Intellectual Property Office (IPO) has launched a consultation on changes to UK Trade Mark law. These changes result from the Trade Mark Directive 2015 which helps to minimise the differences between national and EU trademark systems.
It includes a draft statutory instrument, and discussion of some issues of particular interest. These include removal of the requirement to graphically represent trademarks, restriction of the ‘own name defence’ to individuals, and removing expired marks from the ‘list’ of earlier rights notified to applicants.
The IPO is seeking views on the proposed legislative changes until April 16, 2018. The following email address TMDirective@ipo.gov.uk may be used.
For further information, please see hereSource: www.gov.uk Feb 28, 2018 (Newsletter Issue 4/18)Educational IP Roadmaps by CIPO PublishedThe Canadian Intellectual Property Office (CIPO) launched three intellectual property (IP) roadmaps.
These products aim to increase the understanding of the registration process for trademarks and industrial designs, and the granting process for patents.
For more information, please visit the CIPO IP ToolboxSource: www.ic.gc.ca Feb 28, 2018 (Newsletter Issue 4/18)Practice Tip on Section 2(d) and Foreign Entity DesignationsThe United States Patent and Trademark Office (USPTO) informs that the final version of a new Practice Tip “Section 2(d) and Foreign Entity Designations: When Different Entity Terminology Identifies the Same Owner" is now available.
This Practice Tip is intended to minimize unnecessary Section 2(d) refusals by clarifying when an examining attorney may presume that an applicant owns a conflicting prior registration or application, despite differences in the terminology used to identify the owner’s entity type in the respective records. Source: www.uspto.gov Feb 28, 2018 (Newsletter Issue 4/18)Deposit of Official Fees at FilingAs of January 2018 the Afghani Patent & Trademark Office (APTO) has started to collect filing, classification and registration official fees at the time of filing and prior to substantive examination for absolute and relative grounds noting that registration fees are non-refundable in case of rejection or opposition.
No changes have been introduced to the time of paying official publication fees which will be collected after examination and issuance of acceptance notification.
The official notification can be referred to here
Source: JAH & Co. IP, Qatar Feb 28, 2018 (Newsletter Issue 4/18)11th Edition of Nice Classification AdoptedThe Eleventh Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been officially adopted in the Oman, according to the Trademark Office at the Ministry of Commerce and Industry.
The Trademark Office is now ready to receive trademark applications for goods and services under the same edition of the classification.
Source: JAH & Co. IP, Qatar Feb 28, 2018 (Newsletter Issue 4/18)Renewal of Registration on Agent RegisterThe Canadian Intellectual Property Office (CIPO) informs that patent and trademark agents have until April 3, 2018, to renew their registration on the register of patent agents and the list of trademark agents.
These lists are renewed on an annual basis as set out in subsection 16(1) of the Patent Rules and section 22 of the Trade-marks Regulations respectively.
Since the end of the renewal period, March 31, falls on a Saturday in 2018, the deadline is extended to the next day the Office is open - Tuesday, April 3.
Agents who fail to meet the renewal requirements before April 3, 2018, will be removed from the register of patent agents or from the list of trademark agents. In such cases, agents will need to pay the reinstatement and renewal fee. Further, trademark agents will also need to demonstrate that they have passed the qualifying examination.
For further information, also on the renewal process, please click hereSource: www.canada.ca Feb 28, 2018 (Newsletter Issue 4/18)Preparation for Applications with 3D ImagesRospatent has stated its intention to introduce amendments into the Civil Code of the Russian Federation as to the registration of applications on the IP objects. In particular, it will be possible to file applications for the registration of inventions, utility models, industrial designs and trademarks with three-dimensional images.
The amendments are connected with rapid development of digital technologies. According to the current Civil Code of the Russian Federation, the applicants looking for IP protection in Russia may file applications with two-dimensional images only (e.g., diagrams or drawings). In view of the above, the Administration of Rospatent has decided to update the legislation.
Rospatent has already started its work on the Civil Code development as to the registration of IP objects. The amendments are supposed to come into force in December, 2018.
Source: Mikhailyuk, Sorokolat and Partners, Russia Feb 28, 2018 (Newsletter Issue 4/18)
Payment of Official Fees in USD Suspended Temporarily
The Venezuelan Patent and Trademark Office (SAPI) has informed by official notice published on February 2, 2018, that they have temporarily suspended payments in USD for their services. Such decision is based on the revocation of the regulation that fixed the Exchange Rate to be used to calculate the Official Fees in said currency.
This applies to the Official Fees to be paid by Foreign IP owners for trademark renewals, patent annuities, granting of patents and trademarks as well as changes of proprietorship and address.
Those patents or trademarks having a close due date must be filed with a writ before the SAPI in order to guarantee the owner’s rights.
This procedure will be in force until the Venezuelan authorities define the new payment procedure, amounts and currency to be used.
Source: www.clarkemodet.com
Feb 28, 2018 (Newsletter Issue 4/18)Online IP Registration System LaunchedThe Tanzania Registry announced that all patents and trademarks services are provided through online registration system as from January 4, 2018.
There are no changes on the documents to be filed and the fees to be paid. The applicant completes the forms online, print, sign and scan the forms before uploading the application and making online payment.
For further information, please check hereSource: www.agip.com, www.brela.go.tz Feb 28, 2018 (Newsletter Issue 4/18)Evidentiary Documents Proving Prior Use in Opposition ProceedingsThe Yemeni Trademark Registrar has stipulated that in an opposition filed against the registration of a published trademark application based on prior use, any party may submit an official notification from the Yemeni Chambers of Commerce evidencing use of the opposed trademark in the Yemeni market with all relevant information including the date of first use, the class number, indication of the goods/services for which the trademark has been used and any other documents proving legitimacy and prior use of the trademark and description of the mark which suffices for obtaining a ruling decision in favour of the party having previously used the trademark. This comes in compliance with Article 5 of the 2010 Yemeni Trademark Law 23 of 2010.
The Chambers of Commerce will nominate a committee to conduct market research and investigation to conclude prior actual use based on evidence from the market.
Source: JAH & Co. IP, Qatar Feb 13, 2018 (Newsletter Issue 3/18)Penalty for Late Payment of Publication FeesThe Iraqi Trademark Register has issued a new stipulation to settle the publication fees of accepted trademarks within seven days from the notification of acceptance. Failure to comply therewith will result in a penalty for late payment of publication fees of USD 42 per mark.
Source: JAH & Co. IP, Qatar Feb 13, 2018 (Newsletter Issue 3/18)Requirement to Re-Filing Certain Trademark ApplicationsOn January 29, 2018, the Iraqi Trademarks Registrar started to issue official notifications for removal of old trademarks bearing the filing numbers of 51,000 to 72,000 with a seven days’ time limit to re-file new trademark applications for the same trademark or else the trademark application will be removed from the Trademark Register and considered as never existed.
Trademarks which will be re-filed as of now or within the seven days from notification will remain on trademark records until the newly re-filed trademarks are examined, as the examination process will be connected to the priority filing number of the old trademark.
Source: JAH & Co. IP, Qatar Feb 13, 2018 (Newsletter Issue 3/18)Trademark Law AmendedThe Law of Georgia No. 1636 of December 7, 2017, on Amendments to the Law on Trademarks entered into force on December 14, 2017.
This Law introduces amendments to paragraph (i) of Article 4, and paragraphs (i) and (h) of Article 5 of the Law on Trademarks, regarding the clarification of the content of these provisions on the relative and absolute grounds for refusal of registration of trademarks, which consist of or contain flags, emblems, abbreviations, names and official signs of international intergovernmental organizations, of Georgia and other countries, and the names or portraits of a famous person in Georgia.Source: www.wipo.int Feb 13, 2018 (Newsletter Issue 3/18)Official Fees IncreasedAs of January 1, 2018, new tariffs apply for most of the actions before the Benelux Office for Intellectual Property (BOIP).
The new tariffs are automatically and correctly calculated in the online application on the website of BOIP. A list of the amended fees can be seen here
Source: www.boip.int Feb 13, 2018 (Newsletter Issue 3/18)Official Fees on Notification Search IncreasedThe Finnish Patent and Registration Office (PRH) increased the official fees for providing further details on notifications through the notification search via the Office’s Virre Information Service as of December 1, 2017.
The fee covers getting details such as the processing information of a notification sent to the Trade Register, the details of the officer in charge and the details registered based on the notification.
The price list for Virre can be seen here. To enter the Information Service, please click here.Source: www.prh.fi Feb 13, 2018 (Newsletter Issue 3/18)
Patent and Registration Office Moved
The Finnish Patent and Registration Office (PRH) has moved as of December 8, 2017.
The new address is the following:
Finnish Patent and Registration Office (PRH)
Sörnäisten rantatie 13 C
00091 Helsinki
Finland
The customer service will be open from Monday to Friday 9 am to 4:15 pm as previously.
Source: www.prh.fi
Feb 13, 2018 (Newsletter Issue 3/18)New Forms for Filings of IP RightsThe Italian Patent and Trademark Office, Ufficio Italiano Brevetti e Marchi (UIBM), introduced new forms for the filing of IP rights (patents, trademarks, designs, etc.). Starting from February 5, 2018, new applications for filing of IP rights are only accepted, if made on the new forms.
The new forms are available online hereSource: www.uibm.gov.it Feb 13, 2018 (Newsletter Issue 3/18)
Official Fees Increased
The Swedish Patent and Registration Office (PRV) informs on the official fee increase as of February 14, 2018.
The new official fee for filing a trademark application is now SEK 2,700 in paper form and SEK 2,000 for e-filing in one class. The official fee for each additional class is now SEK 1,000 for e-filing and in paper form.
Source: www.prv.se
Feb 13, 2018 (Newsletter Issue 3/18)
Domain Name Registration Introduced / eServices Changed
The Companies and Intellectual Property Commission (CIPC) has introduced domain name registration services with effect from December 15, 2017. Companies can now register their domain names via CIPC at a cost of ZAR 51.30.
Further, changes to the eServices has been made. The Standard Short Form Memorandum of Incorporation for companies registered under the new Companies Act is now available to every registered CIPC customer for a fee of ZAR 30.00 per request. Also, the services such as the name search, free disclosure and person search are now accessible.
Source: www.cipc.co.za
Jan 30, 2018 (Newsletter Issue 2/18)
Withdrawal of Declaration of Hague Agreement
On December 26, 2017, the Spanish Patent and Trademark Office (OEPM) withdrew from the declaration for the application of level three of the standard designation fee made on January 1, 2008, under Rule 12(1)(c)(i) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (refer to Information Notice No. 4/2008).
The said withdrawal shall take effect one month after the receipt, namely on January 26, 2018. As a consequence, level one of the standard designation fee shall apply where Spain is designated in an international application filed on and after the said date.
January 24, 2018.
Source: www.wipo.int
Jan 30, 2018 (Newsletter Issue 2/18)Fast Track Application Process WorkingThe Austrian Patent Office introduced a fast track application process which leads to registration within two weeks if no further interaction is necessary.
The fast track application process is available for the application of word/figurative individual trademarks filed and paid online. Further, the applicant needs to choose exclusively terms of the harmonised database to specify the goods and services. The service is provided without additional cost.
Our Country Index partner FMO Law Firm from Austria reported that his firm was able to register a trademark in a record time of six days.
Source: FMO Law Firm, Austria Jan 30, 2018 (Newsletter Issue 2/18)Substantial Amendments in Trademark LawOn January 16, 2018, the Argentine Patent and Trademark Office (PTO) issued Regulation No. P-001/2018. It partially implements Decree No. 27/2018.
The Decree 27/2018 of January 10, 2018, (here in after the “Decree”) amends certain articles of the current Law of Trademarks and Designations (Law No. 22,362), the Law of Patents and Utility Models (Law No. 24,481), and Decree-Law No. 6673/1963.
Key amendments on trademarks are the following:
- Filing of oppositions at PTO shall be submitted electronically.
- If the parties fail to reach settlement within a 3 months period (previously 12 months) as of the date the applicant is notified of the opposition, the PTO will issue a decision after the parties undergo an administrative proceeding that has still to be outlined. Decisions issued by the PTO will be subject to appeal before the Federal Court of Appeals within 30 working days.
- The PTO will have the authority to decide on the cancellation and lapsing of trademarks in accordance with the regulations that are still to be issued. In what respects cancellation of trademarks, exception is made of any cases involving piracy or bad faith.
- The PTO will have the authority to issue cancel registrations on a partial basis (on the grounds of non-use), with respect to products or services that are unrelated to the products or services for which the trademark has been used, creating a limit for defense trademarks. PTO’s decisions on any trademark cancellations will be subject to appeal directly before the Chamber of Appeals mentioned above.
- Submission of a sworn declaration of use will be mandatory between the fifth and sixth year from registration.
The published Regulation provides that those terms that were already running at the time the Decree was issued and which are provided for in days will remain unchanged (Art. 1). Concerning terms in months or years, the shorter term applies, keeping in mind that the terms in Decree No. 27/2018 began to run on January 12, 2018 (Art. 2).
For example: Under the prior system, the term for responding to office actions in the preliminary examination was 180 days, which has now been reduced to 30 days; accordingly, the 180-day term running when the Regulation became effective remains unchanged, and the new 30-day term applies only to office actions notified after the Regulation became effective.
For more information on the substantial amendments, please check the note of our Country Index partner from Argentina here
Source: O'Conor & Power, Argentina, Marval, O'Farrell & Mairal, Argentina and Herrero & Asociados, Spain Jan 30, 2018 (Newsletter Issue 2/18)
Mediation in Trademark Disputes Soon to be Obligatory
By virtue of law 4512/2018 which was published on January 17, 2018, all disputes concerning trademarks, patents and industrial designs initiated before civil courts are subject to obligatory mediation.
Hearing of the cases shall be inadmissible if the obligatory mediation process stipulated in the law has not been followed. The provisions shall start to apply as of October 17, 2018.
Plaintiffs are required to submit a request for appointment of a mediator from the list of mediators available on Ministry of Justice website and invite the other party to arrange for mediation within the next 15 days following such invitation. The mediation as such shall not exceed 24 hours unless otherwise agreed by the parties. The mediation must be completed within 30 days following the initial invitation. This may be extended upon mutual agreement of the parties by 30 more days.
Physical presence is not required and mediation can be conducted via teleconference which will be important to foreign entities.
In the mediation proceedings the parties are present together with their attorneys. The parties may decide at this first meeting that they do not wish to engage in the mediation process. This shall suffice for purposes of admissibility of the hearing.
If parties reach an agreement, the respective minutes including the settlement agreement may be submitted to the court secretariat for certification by any of the parties and become an enforcement title. Interim measures are not precluded pending mediation proceedings.
Source: Tsibanoulis & Partners, Greece
Jan 30, 2018 (Newsletter Issue 2/18)
Significant Amendments in IP Laws
The fourth amendment to the IP laws of Vietnam comes into force on January 15, 2018. Circular No. 16/2016/TT-BKHCN (also called Circular No. 16), which was issued on June 30, 2016 by the Ministry of Science and Technology of the Government of Vietnam which amends as well as supplements a number of articles of Circular No. 01/2007/TT-BKHCN (also called Circular 01). The amended circular No. 16 is a critical guidance document for implementing IP laws in Vietnam. These amendments are effective from January 15, 2018.
The amended circular has a major impact on the Intellectual Property practice followed in Vietnam as it modifies almost 49 out of 67 points present in the currently followed circular No. 1.
Further, these modifications will resolve certain issues and concerns and align the IP laws of Vietnam with International IP system. The modifications mostly apply on the examination procedures conducted by National Office of Intellectual Property (NOIP) of Vietnam related to Patents, Trademarks, copyrights, Designs and other IPR. These provisions will also create favorable conditions for applicants for obtaining IP rights in Vietnam.
Below mentioned are some of the important amendments and supplements provided by the Circular No. 16 related to examination process of general regulations and trademarks:
1. General Regulations
- Revision of time limits for filing response to Office Action
The time frame to respond to an office action concerning Formality Examination will now be 2 months instead of 1 month.
The timeframe to respond to an office action concerning substantive examination will now be 3 months instead of 2 months.
The deadline for the payment of registration fee will be 3 months instead of 1 month.
- Appeals and their settlements
Addition of new facts/details in application will not be accepted at the appeal stage. However, on the request made by the applicant or appellant, NOIP may re-examine such new facts/details. The amended circular allows the appeals settlement body to seek opinions of independent experts if the appealed case has a degree of complexity.
- Decisions on Refusal
On getting a decision of refusal after substantive examination, the applicants can overcome the same by submitting new facts/details which were not considered in the examination and the NOIP may consider withdrawing the decision of refusal. The applicants do not have to lodge an appeal against the decision of refusal.
2. Key changes on trademarks
- Rights to object to disclaimers of the NOIP within three months from the notification date
- Response to office action regarding international application
In cases where, the Madrid application is rejected by NOIP, the applicant, has a three-month period to respond to the provisional refusal by NOIP, and then 90 days to appeal the decision on refusal.
- Recognition of well-known marks
through the settlement of enforcement or opposition/examination of a trademark that is identical/confusingly similar to the concerned mark.
- The modified circular expressly clarifies the type of organizations that can register collective marks, which was not mentioned in the earlier circulars.
Source: Khurana & Khurana Advocates and IP Attorneys, India
Jan 30, 2018 (Newsletter Issue 2/18)
PTO Notification to Update Registered Trademark
The Angolan PTO published a notification, requesting all applicants and/or attorneys of trademark applications numbered from 5,001 to 20,757 to present the following documents in order to update the files respective to these trademarks:
- Copy of the official filing receipt or application request;
- Power of Attorney or Proxy;
- Certificate of Incorporation, proving the company's commercial activity in its native country;
- Official payment receipt of the granting fee and/ or renewal fee;
- Other relevant documents (recordals, assignments).
All documents shall be legalised at the Angolan Consulate of the applicant's country or the nearest country, and duly translated into Portuguese and certified by a Public Notary.
In light of the above, in case the aforementioned trademark files are not updated by presenting the requested documentation, it will lead to their expiration/forfeiture according to the law.
Trademarks already granted or refused are excluded of this actualisation process. The deadline to present the referred documents is 12 months, counting from the publishing date of Industrial Property Bulletin No. 11/2017, December 26, 2017. Therefor these documents shall be filed until December 26, 2018.
Source: Inventa International, Angola
Jan 30, 2018 (Newsletter Issue 2/18)Anti-Unfair Competition Law AmendedOn November 4, 2017, the 30th Meeting of the Standing Committee of the Twelfth National People’s Congress of the People’s Republic of China passed an amendment to the Anti-Unfair Competition Law of the People’s Republic of China (“Anti-Unfair Competition Law”), which came into effect on January 1, 2018.
This is the first major amendment to the Anti-Unfair Competition Law since its implementation in 1993, and it will have a significant impact on businesses in China.
The amendment provides greater clarity about judging principles on an unfair competition activity and emphasizes the need to protect the public interest, as well as the interests of businesses and consumers.
With respect to trademarks the Law alters Article 5 to remove duplication with the Trademark Law by deleting the reference to “feigning of others’ registered trademarks” in Article 5(1). Consistently, the amendment also removes Article 5(4), which prohibited making misleading or deceptive representations about the origin or quality of goods, and the use of false documentation (e.g. certificates of attestation, qualification, quality or origin) to mislead others.
The amendment also expands the definition of ‘protected commercial marks’ to include the name, packaging, domain name, and website name used for a particular product. The expanded scope of this definition will facilitate greater effectiveness in regulating anti-competitive conduct online.
For further information, please check hereSource: King & Wood Mallesons, China Jan 30, 2018 (Newsletter Issue 2/18)
Notice on Informational Letters Before Trademark Duration Ends
The German Patent and Trademark Office (DPMA) published a notice of the change in practice, according to which information letters are sent to owners who have not renewed their trademarks.
Up to now, the information letters have been sent 3.5 months after the end of trademark protection if the trademark had not been renewed at that time. With immediate effect, the Office will now inform the trademark proprietor earlier by sending information letters at least six months before the end of the trademark term. The adaptation will take place in several steps and should be completed by the end of 2018.
The DPMA points out that this is a service provided by the Office without any legal obligations. However, proprietors of trademarks are obliged to notify the Office of changes in the service address and the payment of the renewal fee.
Source: www.dpma.de
Jan 30, 2018 (Newsletter Issue 2/18)New E-Service DPMAdirektPro IntroducedThe German Patent and Trade Mark Office (DPMA) has launched DPMAdirektPro on January 1, 2018, after successful trial operations. The new e-service enables the Office to electronically transmit office actions and electronically deliver decisions. In return, customers can electronically send a return confirmation of receipt to the DPMA. With this service, the DPMA and its customers can now manage the case files completely electronically.
Previous users of DPMAdirekt are requested to install the current software version of DPMAdirektPro. Customers need to register to participate in the electronic transmittal of documents. They will then receive a PIN to activate the additional functions of the software. Test users do not need to take any further action but can continue to work with the system as before.
All customers may use the service not only for new applications but also for existing case files by making a request with the DPMA. The traditional paper route of transmittal for individual or all case files is still available.
The DPMAdirektPro software can be downloaded here
Source: www.dpma.de Jan 16, 2018 (Newsletter Issue 1/18)
New Resolution Intends to Expedite Substantive Examination of Trademark Applications
The Brazilian PTO published on December 26, 2017 the Resolution No. 206 of December 20, 2017 with the purpose to expedite the substantive examination of trademark applications.
The requisites of legitimacy of an applicant will be conducted randomly and the Examiners will only raise an Office Action in case of doubt about the veracity of the informed data. Any interested third party will be allowed to challenge the validity of any information of an applicant by means of an opposition or administrative nullity procedure.
This resolution will be in force after 30 days as of the publication date.
Source: Tavares Advogados, Brazil
Jan 16, 2018 (Newsletter Issue 1/18)10th Edition of the Nice ClassificationThe Trademark Authorities at the Ministry of National Economy in West Bank have officially adopted the tenth edition of the International Classification of Goods and Services for the purpose of the registration of trademarks under the nice agreement (Nice Classification). Accordingly, the Trademark Office is now ready to receive trademark applications for goods and services under the 10th edition of the classification.
Source: JAH & Co. IP, Qatar Jan 16, 2018 (Newsletter Issue 1/18)New VAT Rate EffectiveAs of January 1, 2018, Value Added Tax (VAT) of 5% will be applied in Saudi Arabia in relation of goods and services.
Professional (attorney) charges of all new intellectual property IP cases and pending cases to be completed on or after January 1, 2018, will be bound to the new VAT rate.
Furthermore, publication fees of all types of trademark applications such as new, renewal and recordal applications have increased by 5% and shall be included in the VAT.
Source: JAH & Co. IP, Qatar Jan 16, 2018 (Newsletter Issue 1/18)New VAT Rate AppliedAs of January 1, 2018, Value Added Tax (VAT) of 5% has been applied in the United Arab Emirates in relation of goods and services.
Professional (attorney) charges of all new intellectual property IP cases and pending cases to be completed on or after January 1, 2018, will be bound to the new VAT rate.
Source: JAH & Co. IP, Qatar Jan 16, 2018 (Newsletter Issue 1/18)
Hague Agreement on Industrial Designs in Force Soon
On November 30, 2017, Russia ratified the Geneva Act of the Hague Agreement on International Registration of Industrial Designs by depositing its instrument of ratification with the World Intellectual Property Organization (WIPO). The Geneva Act will enter into force in Russia on February 28, 2018.
The Hague Agreement, administered by WIPO, regulates the international registration of industrial designs. Accession allows interested parties to obtain design protection with a single application in all the countries that are members of the Geneva Act, which now counts a total of 53 contracting parties.
Source: www.petosevic.com
Jan 16, 2018 (Newsletter Issue 1/18)
Updates to Trade Mark Practice Guidelines and Specifications
IPONZ is going to update the Trade Mark practice guidelines in early January 2018 by updating its practices for trademark applications with Māori geographical names. This follows recent treaty claim settlements as well as comments from ‘iwi’, the largest social units/tribes of the New Zealand Māori society. All trademark applications with Māori geographical names will now be forwarded to the Māori Advisory Committee for advice whether the mark is likely to be offensive to Māori.
As of January 1, 2018, IPONZ updated its practices around the acceptability of a range of goods and services descriptions. This includes updating the guidelines ensuring their consistency with the 11th Edition of the Nice Classification System as well as updating the options in the Goods and Services Classification selector.
Source: www.iponz.govt.nz
Jan 16, 2018 (Newsletter Issue 1/18)
Time Limit for Initial Examination Increased
The Swiss Federal Institute of Intellectual Property (IPI) informs that due to the high number of Swiss applications for the registration of trademarks, the time limit for the initial examination has been increased to four months from the date of the payment of the filing fee and any class surcharges. Within this time limit, IPI will either confirm that the trademark is to be accepted for registration in the register or inform of any deficiencies which can be subsequently remedied within a given time limit.
Source: Source: www.ige.ch
Jan 16, 2018 (Newsletter Issue 1/18)Beijing IP Court Decides on First Ever GUI Design Infringement CaseOn 25th Dec., Beijing IP court has made a decision on the first ever Graphic User Interface (GUI) design infringement case in China. To the disappointments of many, it has proven to be a temporarily significant blow to the protection of GUI design patents.
As partial design is not allowed in China, GUI design has to be filed together with a product, e.g. as "A Computer with GUI" in this case. However, the accused infringer's product is a software. Unfortunately, the court decided that "computer" and software are different classes of products, hence there was no infringement.
The decision would mean that for thousands of granted GUI design patents in China, their scope of protection could be limited by their hardware carrier (e.g. a computer or a mobile phone). However, it's possible that the appeal decision will overturn this case. Especially, partial design is due to be allowed in China in the next amendment.
This means that GUI designs will be protected independently in the future, it's only a matter of time.
For further information, please read the article of our Gold Country Index Partner Chofn Intellectual Property here
Source: Chofn Intellectual Property, Beijing, China Dec 20, 2017 (Newsletter Issue 22/17)
Notice on Extensions of Time Limits in Opposition Proceedings
The German Patent and Trade Mark Office (DPMA) issued a notice on the handling of requests for extension of time limits and comments in opposition proceedings.
The Office informs that a first extension of the time limit (of normally two months) may be granted if sufficient reasons are presented (Sec. 18(2) DPMA Ordinance) in opposition proceedings.
For all further extensions of the time limit, a prima facie legitimate interest and consent of the parties concerned must be shown (Sec. 18(3) DPMA Ordinance). In future, these extensions of time limits will be granted for up to a maximum period of six months. If the negotiations on delimitations have not yet been concluded when the period expires, a further request for extension of the time limit can be furnished.
Each formal written statement will be sent to the other party to the proceedings (principle of the right to be heard). However, the DPMA assumes that the parties to the proceedings provide a comprehensive comment in their respective first formal written statement. Subsequently further formal written statements will be served by the DPMA inviting the recipients to make a final comment.
Source: www.dpma.de
Dec 20, 2017 (Newsletter Issue 22/17)Trademark Law AmendedThe Austrian Trademark Protection Act (MSchG) has been amended to partly implement the EU Trademark Directive 2015/2436 and to better adapt the national provisions to the needs of trademark owners. Most of the amendments have been in force since September 1, 2017.
Some of the main amendments are:
- Introduction of certification marks
Certifications marks have been registrable since September 1, 2017.
- Changed calculation of due date and reduction of renewal fees
The ten-year protection period of national Austrian trademarks will be calculated from the date of the application and no longer from the registration as of September 1, 2018. Also, existing trademarks will fall under this new provision. The adoption to the new calculation will shorten the next protection period. To avoid this disadvantage, the renewal fees will be reduced according the length of the shortened period.
- Division of a trademark application or registration
Since September 1, 2017, national trademark applications or registrations may be divided into two or more separate applications or registrations which will bear the original application or priority date. A fee of EUR 200 has to be paid within two months upon filing. Divisions which affect goods and services subject to an opposition or cancellation proceeding may only be effected after termination of those proceedings. The division of Austrian designations of International Registrations is possible from February 1, 2019.
- No subsequent extension of the list of goods and services
Austria eliminated the possibility to extend the protection of an existing trademark to additional goods and services.
- Reduced official application fees and 'fast track application'
The official fees for trademark applications have been reduced and the possibility of a 'fast track application' process has been introduced for online applications without additional cost.
For further information, please read the article of Schönherr Attorneys at Law here
Source: Schönherr Attorneys at Law, Austria and Sonn & Partner Patentanwälte, Austria Dec 20, 2017 (Newsletter Issue 22/17)
Preparing for Accession to the Madrid Protocol
WIPO and the Brazilian National Institute of Industrial Property (INPI) are having talks about the possible accession of Brazil to the Madrid Protocol.
Among several requirements INPI has to adapt to a certain standard of technological infrastructure and man power. Given the operational needs of the Institute, INPI aims to decrease the registration period for Brazilian trademarks from the current 25 months (unopposed marks) to the required 18 months by the end of 2018 in order to be able to start receiving international orders, via the Madrid System, in 2019.
Source: www.inpi.gov.br
Dec 20, 2017 (Newsletter Issue 22/17)E-Filing IntroducedThe Kuwait Trademark Office announced that it has undertaken the necessary procedures towards switching filing trademarks to a completely online system. By this, Kuwait becomes the latest GCC country to adopt the online filing system.
The required documents need to be uploaded online and the originals should be submitted to the Office within a period of three months (non-extendable) from the filing date. Failure to comply therewith will result in the lapse of the filed trademark application. However, trademark applications can still be filed electronically without the necessary documents at the time of filing.
The earlier practice of filing trademarks using paper files has been discontinued. Thus, simple copies of colored copies of the legalized POA and priority document in case of priority claim shall fulfill the documentary formalities of filing of trademarks.
Source: JAH & Co. IP, Qatar Dec 20, 2017 (Newsletter Issue 22/17)Practice Change on Trademark RenewalsThe Trademark Laws of Afghanistan do not contain any provision for grace periods. The Trademark Registration Law (2009) Article 20 (3) adopted in Afghanistan, says that a trademark which has not been renewed within the last six months of the ten years protection period stands expunged.
In practice the trademark department has allowed a 6 month grace period from the expiration date. The practice will come to an end as of December 2017 and consequently there is no possibility to renew the trademark registration after the expiry of the protection period. Renewal applications should be made during the 6 months preceding the expiry date.
Source: JAH & Co. IP, Qatar
Dec 20, 2017 (Newsletter Issue 22/17)PoA Validity Term DeclaredThe Trademark Office in Saudi Arabia declared that the validity of the Power of Attorney (PoA) is now five years from the date of issuance, unless the duration on the PoA is stated unlimited or the POA is revoked.
The above directives are put into effect by a memo issued by the Ministry of Justice on March 15, 2016, but was implemented recently by the trademark authorities.
It is worth noting that a scanned colored copy of the PoA will be sufficient at the time of filing in support of trademark application. The original document may be submitted at a later stage.
Source: JAH & Co. IP, Qatar Dec 05, 2017 (Newsletter Issue 21/17)11th Edition of Nice Classification AdoptedThe Qatar Trademark Office has adopted the 11th Edition of the Nice Classification for filing trademarks.
Source: JAH & Co. IP, Qatar Dec 05, 2017 (Newsletter Issue 21/17)Issuance of Trademark Registrations ElectronicallyThe UAE Trademark Office has sent out a circular in which it informs local representatives that from November 27, 2017, the official registration fees will be charged electronically and thus the trademark registration certificate will only be issued in electronic form.
Source: JAH & Co. IP, Qatar Dec 05, 2017 (Newsletter Issue 21/17)Change of Trademark Publication ProcedureThe Iraqi Trademark Office informed about the change in publication of trademark applications procedure. Trademark applications once examined and accepted will be published in the Official Bulletin for opposition purposes three times in short intervals. The opposition term of 90 days will be calculated from the third notice of publication.
The Iraqi Trademarks registrar started to implement the three publications system with the Official Bulletin no. 557 issued on November 20, 2017. The trademark will be re-published in the Official Bulletin no. 558 and 559. The opposition term of 90 days will start from the third notice of publication in the Bulletin no. 559.
Source: JAH & Co. IP, Qatar Dec 05, 2017 (Newsletter Issue 21/17)Guidelines on Designation of Goods and Classification AmendedThe Guidelines for the Designation of Goods and Classification (Guidelines) were amended on June 29, 2017, and the changes became effective on July 5, 2017. The Guidelines set out what designations of goods and services are acceptable to the Korean Intellectual Property Office (KIPO).
Korea has adopted the Nice Agreement concerning the International Classification of goods and services for the purposes of the registration of marks. The eleventh edition became effective on January 1, 2017. In principle, KIPO examiners follow the general rules of the Nice Classification System, such as the class headings, explanatory notes and alphabetical list. However, not all goods and services designations in the alphabetical list of the Nice Classification have been included in the Guidelines.
With the recent amendments, the list of acceptable goods and services designations in the Guidelines has been significantly expanded. More than 4,000 goods and services designations have been newly added, some of which were adopted from the Nice Classification list, while others were adopted from the list of acceptable goods and services provided by the European Union Intellectual Property Office (EUIPO).
Particularly new goods and services have been introduced in the classes 5, 8, 10, 30, 38, 41, 42. For more information on designations, please click here
An applicant can still register a mark for goods and services which are not clearly listed in the Guidelines, as long as the applicant can satisfactorily explain to the examiner what the goods/services are and that they have been properly classified. However, with the introduction of the amended Guidelines' list of goods and services it should substantially get easier for applicants to obtain registrations for many goods and services, as well as registrations of a broader scope than before.
Source: www.kimchang.com Dec 05, 2017 (Newsletter Issue 21/17)Design Protection Act AmendedSeveral amendments to the Design Protection Act (DPA) went into effect on September 22, 2017.
The grace period for design applications has been extended from 6 months to one year. Further, proof of priority has been eased as the applicant is now allowed to submit other documents as confirmation of the details of the foreign priority application. Also, the penalties have been increased for various offenses.
More information on the recent amendments can be found in our previous news online and here
Source: www.kimchang.com Dec 05, 2017 (Newsletter Issue 21/17)
Civil Procedure Code Amended
Major amendments to the Bulgarian Civil Procedure Code entered into force in November 2017, including changes to the order for payment procedure, the procedure for notifying individuals of court actions, court fees and civil enforcement regulations. There are also two main changes directly related to IP.
First, it is now explicitly specified that enforcement officials can seize or sell judgement debtors' industrial property rights in order to enforce the rights of judgement creditors. While enforcement officials could previously sell debtors' properties, such as real estate and vehicles, or freeze their bank accounts, the Civil Procedure Code now also explicitly provides for the sale and seizure of debtors' rights over trademarks, patents, utility models, industrial designs, topologies of integrated circuits, plant varieties and animal species as a way to ensure that a creditor receives what they are entitled to. Copyright and related rights are not included in the scope of the provision. This enforcement procedure can be carried out by both state and private enforcement agents and must be entered in the Bulgarian PTO's register.
Second, the traditionally narrow scope of cassation grounds has now been widened. Previously, subject to cassation at the Bulgarian Supreme Court of Cassation were appellate court decisions that were:
- Contradicting the Bulgarian Supreme Court of Cassation case law;
- Addressing an issue previously resolved by a civil court in a contradictory manner; and
- Addressing an issue which is important with respect to the accurate application of legal norms or to the development of the law itself.
From now on, appellate court decisions contradicting the case law of the Court of Justice of the European Union (CJEU) and of the Bulgarian Constitutional Court are also subject to cassation.
Source: www.petosevic.com
Nov 22, 2017 (Newsletter Issue 20/17)E-Filing System Implemented The Qatar Trademark Office has upgraded its system and undertaken the necessary procedures towards switching trademark filing completely to an online system.
The documentary requirements will be fulfilled online by uploading the required documents upon filing and submitting the originals within a month from the date of filing.
The earlier practice of filing trademarks using paper files in the presence of the original power of attorney has been discontinued. Thus, simple copies of the legalized POA, the certificate incorporation or the extract from the commercial register of the Applicant Company and the priority document (if applicable) suffice to fulfill the documentary formalities of trademark filing.
It is expected that the same system will be adopted for renewals, recordals and all other trademark related actions soon.
Source: JAH & Co. IP, Qatar Nov 22, 2017 (Newsletter Issue 20/17)Separate Certificates for Renewal and RecordalThe Trademark Office in Kuwait has implemented new procedures whereby they start issuing separate certificates for renewal and recordal actions which include changes of name or address, assignments and mergers while the original registration certificates is no longer required for endorsing these actions thereon. As per the old practice, renewal or recordal actions were endorsed on the back of the original registration certificates without the issuance a fresh certificate reflecting the action.
Source: JAH & Co. IP, Qatar Nov 22, 2017 (Newsletter Issue 20/17)
E-Filing System Expected Soon
It has been decided that an electronic filing system for trademarks and patents will be adopted after a meeting between the Tunisian Office for Normalization and Industrial Property (INNORPI) as well as the main agents of patents and trademarks in Tunisia.
It is expected that the new system will officially begin operation in January 2018 starting with trademarks.
Source: www.agip.com
Nov 22, 2017 (Newsletter Issue 20/17)Trademark Search Tool ChangedThe UK Intellectual Property Office (IPO) announces that they have improved their online search services to streamline the usability of their trademark search tool.
These improvements were added to reduce the number of steps required when using their online search function.
Further changes have been implemented. For more information, please click here
Source: www.gov.uk Nov 22, 2017 (Newsletter Issue 20/17)
New Database Linking International Trademark Data
IP Australia has developed a single, internationally-linked trade mark database called TM-link in partnership with Swinburne University of Technology and the University of Melbourne.
TM-link is a world-first platform that links trademark applications across countries and helps businesses search for trademarks across multiple jurisdictions.
Currently, TM-link includes trademark data from Australia, Canada, the European Union, New Zealand, and the United States.
It is planned to incorporate further trademark data from countries such as the United Kingdom, Germany, France, China, Japan, and South Korea.
Source: www.ipaustralia.gov.au
Nov 22, 2017 (Newsletter Issue 20/17)Value Added Tax Rate Implemented SoonSaudi Arabia and the United Arab Emirates are set to implement VAT (Value Added Tax) in their jurisdictions. The VAT will apply to goods and services at the standard rate of five percent, with some limited exceptions on basic food items, healthcare, and education.
All IP matters in Saudi Arabia and United Arab Emirates filed as on January 1, 2018, will be subject to VAT, as well as all pending stages for the previous work.
The VAT Law is based on the common principles agreed by all Gulf Cooperation Council countries as outlined in the GCC VAT framework agreement. Each member state of the GCC (which also includes Bahrain, Kuwait, Oman, and Qatar) is expected to establish their own separate national legislation concerning the VAT and as such the detailed compliance requirements and set of rules.
Source: JAH & Co. IP, Qatar Nov 22, 2017 (Newsletter Issue 20/17)Value Added Tax Rate Implemented SoonThe United Arab Emirates and Saudi Arabia are set to implement VAT (Value Added Tax) in their jurisdictions. The VAT will apply to goods and services at the standard rate of five percent, with some limited exceptions on basic food items, healthcare, and education.
All IP matters in the United Arab Emirates and Saudi Arabia filed as on January 1, 2018, will be subject to VAT, as well as all pending stages for the previous work.
The VAT Law is based on the common principles agreed by all Gulf Cooperation Council countries as outlined in the GCC VAT framework agreement. Each member state of the GCC (which also includes Bahrain, Kuwait, Oman, and Qatar) is expected to establish their own separate national legislation concerning the VAT and as such the detailed compliance requirements and set of rules.
Source: JAH & Co. IP, Qatar Nov 22, 2017 (Newsletter Issue 20/17)Application in the Name of an Individual Possible NowAs of November 15, 2017, applications in the name of an individual are possible under the jurisdiction. The applicant only has to present a power of attorney legalized up to the Qatari Consulate abroad in order to meet the application requirements. Formerly, applications were only allowed for corporations.
Source: JAH & Co. IP, Qatar Nov 07, 2017 (Newsletter Issue 19/17)Official Fees IncreasedThe Egyptian Trademarks Office has announced an increase in the official fees for trademarks. The increase became effective starting October 15, 2017. The increase covers new applications as well as retroactively those applications, which relevant publication and registration fees have not been paid yet.
The new official fee for filing a trademark application is EGP 100.00 per class.
Source: JAH & Co. IP, Qatar Nov 07, 2017 (Newsletter Issue 19/17)New Stipulations to Come into ForceOn October 30, 2017, the Iraqi Trademark Office issued new directives which have brought in force the stipulations of article No. 15 of Iraqi Trademark Law No. 26 of 1957 pertaining the publication of renewals, recordals of change of name & address, merger, assignment etc in the Official Gazette. The said stipulations are expected to come into play in November 2017.
According to the notified decision, an official fee of IQD 200,000 (equivalent to USD 170) will be incurred for the above-mentioned actions. It will be applied for newly filed actions and retroactively for pending actions which have not yet been issued with their certificates.
Source: JAH & Co. IP, Qatar Nov 07, 2017 (Newsletter Issue 19/17)New TMEP AvailableThe United States Patent and Trademark Office (USPTO) informs about that the October 2017 Trademark Manual of Examining Procedure (TMEP) is now available. This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before Sept. 1, 2017.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict.
Please see the Change Summary or a complete list of changes.
Source: www.uspto.gov Nov 07, 2017 (Newsletter Issue 19/17)
Filing of Trademark / Design Applications Electronically Only
The French National Trademark Office (INPI) informed on its website that filing of a trademark and design can be done only electronically via the website 'www.inpi.fr' as of October 16, 2017.
As of November 2, 2017, procedural exchanges, withdrawal declarations and requests for correction of material errors can only be filed online.
Source: www.inpi.fr
Oct 24, 2017 (Newsletter Issue 18/17)Establishment of IP High Court On September 29, 2017, the President of Ukraine signed Decree No. 299/2017 establishing the High Court on Intellectual Property with location in Kyiv.
According to the State Judicial Administration, the court will have 21 judges who will deal with the disputes about copyright, trademarks, inventions, patents, author's rights and administration of titles to intellectual property.
The Decree came into force on September 29, 2017.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Oct 24, 2017 (Newsletter Issue 18/17)Official Publication Fees IncreasedOn September 28, 2017, the Minister of Internal Trade has issued a Ministerial Decree No. 2133 announcing an increase in the official publication fees for new trademarks and renewal applications, as well as publication for recordals of assignment, merger, and change of name and address.
The publication fee for accepted applications in the Official Gazette (for a list of goods of 10 words) will now be USD 200 instead of USD 70.
It should be noted that renewals with respect to trademarks filed or renewed before April 2007 will be published twice, the first time after acceptance and the second time after issuing the registration or renewal certificate. While renewals with respect to trademarks filed or renewed after April 2007, there will be only one publication after acceptance.
The decree became effective on October 15, 2017.
Source: JAH & Co. IP, Qatar
Oct 24, 2017 (Newsletter Issue 18/17)Draft Trade Mark Law PublishedFrom August 8-10, 2017, the draft of Myanmar’s Trade Mark Law has been published in newspapers for public comment.
The bill is now being reviewed by the concerned Draft Law Committee of the Parliament. Its approval is expected by the end of this year.
As a member of the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), the nation is expected to deliver its IP laws in the near future to provide protection for trademarks, copyright, patents, and other intellectual property.
For further information, please read the article of the law firm Mirandah Asia from Singaproe here
Source: www.mirandah.com Oct 24, 2017 (Newsletter Issue 18/17)
Accession to Hague Apostille Convention
On September 6, 2017, Bolivia deposited its instrument of accession to the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention).
The Apostille Convention will enter into force for Bolivia on May 7, 2018.
Source: www.hcch.net
Oct 24, 2017 (Newsletter Issue 18/17)
Close to Join the Banjul Protocol and Vienna Agreement
On September 19, 2017, the Council of Ministers of Mozambique approved a resolution for Mozambique to accede to the Banjul Protocol. The Banjul Protocol on Trade Marks provides for the filing of a single trade mark application at the ARIPO Office (African Regional Industrial Property Organization), which will cover any member state designated by the applicant.
The next step is the deposit of the instruments of accession with the Director General of ARIPO. Currently there is no prevision of when such will happen. After the instruments are deposited, the Protocol will come into force within 3 months.
In the same session, the Council of Ministers of Mozambique also approved the resolution ratifying the country’s accession to the Vienna Convention for Trademark Classification. Vienna’s Classification is an international classification regarding trademarks’ figurative elements that was adopted through the Vienna Agreement of 1973.
Source: www.adamsadams.com
Oct 24, 2017 (Newsletter Issue 18/17)Updated Guidelines for Proof of Use in Opposition ProceedingsOn September 29, 2017, the Turkish PTO (TPTO) published an updated version of the guideline giving more detailed information about non-use as a defense practice.
In the updated guideline it is clearly indicated that the new practice aims to align the Turkish practice to the laws and practice of the EU where the same defense is stated in article 44 of EU Trademark Directive no 2015/2436 and article 42 in EU Community Trademark Regulation no 207/2009.
For further information, please check the article from our Country Index partner OFO VENTURA here
Source: OFO VENTURA, Turkey Oct 23, 2017 (Newsletter Issue 18/17)Official Fees for Accelerated Trademark Registration ChangedDecree No. 197 of September 28, 2017, has been issued by the Ukrainian Intellectual Property Institute (UKRPATENT), which provides that a fee may be paid for the acceleration of examination of a trademark application after 3 months from the filing date of the application. If this fee is paid, the examination itself will take place within 3 months of payment of the fee, and accelerated registration of the trademark should then take around 6 to 7 months under normal circumstances.
The revised official fees for this procedure are valid from October 1, 2017. The following fees will apply:
for word/figurative trademarks:
- UAH 5,220 for one class (previously UAH 4,828.5)
- UAH 612 per class in excess of one (previously UAH 566.1)
for combined trademarks:
- UAH 9,396 for one class (previously UAH 8,691.3)
- UAH 960 per class in excess of one (previously UAH 888)
Source: Mikhailyuk, Sorokolat and Partners, Ukraine
Oct 05, 2017 (Newsletter Issue 17/17)Applications for Sounds Marks Now PossibleRegistrations for sound marks was introduced by the new Trademark Act, Trademark Act (No. 3) B.E. 2559 (2016) (the Trademark Act), which came into effect on July 28, 2016. However, it was not until Ministerial Regulation No. 5 B.E. 2560 (A.D. 2017) (the “Ministerial Regulation”) was issued on September 1, 2017, that it became possible to file applications for sound marks in Thailand.
The application of a sound mark applicant must include a clear description together with a clear audio recording of the mark. In addition, the applicant may also submit musical notation, sonograph or other graphical representation along with the application in order to illustrate the sound.
For further information and requirements, please read the article of the law firm Baker McKenzie from Thailand here
Source: www.bakermckenzie.com Oct 05, 2017 (Newsletter Issue 17/17)
Apostille Convention in Force
On September 18, 2017, the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention) entered into force for Guatemala.
The country had acceded to the Apostille Convention on January 19, 2017. No objections were raised to its accession.
Source: www.hcch.net
Oct 05, 2017 (Newsletter Issue 17/17)Official Fees IncreasedThe Moroccan Office of Industrial and Commercial Property has announced an increase in the official fees for all IP matters including Trademarks, Patents and Designs. The increase is effective starting October 1, 2017.
The official fees are reduced when the filing formalities are made online noting that only operations related to trademark (filing & renewal), Industrial design (filing & renewal) and annuities, are operational via the online services for the time being.
The new official fee for filing a trademark online is now MAD 1,800 for the first class and MAD 360 for each additional class. Filing per paper is MAD 2,400 for the first class and MAD 480 for each additional class.
A list of the new official fees can be seen here
Source: JAH & Co. IP, Qatar Oct 05, 2017 (Newsletter Issue 17/17)
Accession to Madrid Protocol
On October 2, 2017, the Government of Indonesia deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Indonesia the 100th member of the Madrid Union.
The Protocol will enter into force for Indonesia on January 2, 2018.
Source: www.wipo.int
Oct 05, 2017 (Newsletter Issue 17/17)
Official Fees Slightly Soon Increased
On September 29, 2017, the Russian Federal Service for Intellectual Property (Rospatent) published the revised schedule of patent and trademark fees.
The official fees for trademark-related matters have not increased significantly, but the amendments include an additional fee for each class over five for trademark filing, registration and renewal.
As of October 6, 2017, the official fee for filing a trademark application is RUB 3,500 for up to five classes and 1,000 for each additional class (if more than five classes are requested). The new examination fee is RUB 11,500 for one class and RUB 2,500 for each additional class. The official fee for registration of a trademark is RUB 16,000 for up to five classes and RUB 1,000 for each additional class (if more than five classes are requested).
Also, the fee payment deadline was shortened from four to two months after the notification date.
Source: www.petosevic.com
Oct 05, 2017 (Newsletter Issue 17/17)Official Fees Increase AnnouncedThe Benelux Office for Intellectual Property (BOIP) informed on its website an increase of their tariffs for their products with effect from January 1, 2018. BOIP tariff's have remained unchanged since 2005. On September 28, 2017, the Management Board decided to increase them.
In 2018, the tariff for filing a trademark will be EUR 248. The tariff for filing a single design will be EUR 112.
Further information can be seen here
Source: www.boip.int Sep 20, 2017 (Newsletter Issue 16/17)Transitional Provisions Regulations in Cayman Islands IssuedThe Cabinet of the Cayman Islands issued the Trade Marks (Transitional Provisions) Regulations, 2017 (the “Transitional Provisions”) on July 28, 2017. The Trade Marks Law, 2016 was passed in November of last year and went into effect on August 1, 2017.
The Registrar must automatically transfer marks currently registered under the 2011 Law to the Register established by the 2016 Law. These marks will continue as registered until their renewal dates as established under the 2011 Law (i.e., the renewal dates of the UK registration, EUTM, or International Registration used as their basis). Disclaimers, conditions, and restrictions remain with the transferred marks. Pending applications for registration made before August 1, 2017 will be treated as a registration under the 2011 Law. Such marks will then automatically become a part of the new Register as described above.
For further information, please read the article of our Partner Caribbean IP here
Source: Caribbean IP, USA Sep 20, 2017 (Newsletter Issue 16/17)
New Ordinance on IP Representatives Adopted
On August 4, 2017, the Bulgarian Council of Ministers adopted a new Ordinance on Industrial Property Representatives, regulating the requirements for representatives in the field of industrial property.
The Ordinance entered into force on September 8, 2017 and introduces the possibility for industrial property representatives to exercise their profession in partnerships. All individuals wishing to become representatives will be required to pass a qualifying exam. A register of approved representatives will be made available on the Bulgarian Patent Office’s website.
The new Ordinance aligns Bulgarian legislation concerning IP representatives with Directive 2006/123/EC and Directive 2005/36/EC.
Source: www.petosevic.com
Sep 20, 2017 (Newsletter Issue 16/17)
Formal Requirements for Recordal of Assignments Reduced
On August 2, 2017, an amendment of the Austrian IP laws entered into force which considerably reduces the formal requirements for the recordal of assignments, mergers or changes of name. The new rules will apply for all protective rights (patents, utility models, trademarks, designs and SPCs).
Generally, it is now sufficient to submit a confirmatory assignment signed by the concerned parties, without notarization of their signatures. Filing the original of an assignment document with the signature of the assignor notarized has thus become unnecessary in most cases.
Source: www.sonn.at
Sep 20, 2017 (Newsletter Issue 16/17)More Proof of UseThe Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular No. 17-010 entitled Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017 which took effect on August 1, 2017.
A major amendment involves the submission of the Declaration of Actual Use (DAU) when renewing the registration, and within one year from the 5th year anniversary of the renewal. Failure to do so will result in the application being refused or the removal of the registration from the IPOPHL Registry (Rule 204). The notable periods for the submission of the DAU’s under these new rules are:
(a) Within three (3) years from the filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the fifth anniversary of each renewal.
Only “a” or the third year DAU allows for extension of filing, and this is a one-time extension of six (6) months. Actual use of the mark may commence during the extension period. All the DAU’s to be filed must be coupled with the evidence of such use, and payment of the required fees. It is not obligatory for the IPOPHL to issue notices to the applicants/registrants to file its DAU.
A new rule was further introduced. As provided in the old rules, use in any of the goods or services in a class inures to the benefit of all the goods in said class. The new Rule 209 clarifies the effect of actual use for related classes. It allows the subsequent filing of another DAU to cover classes for which the first DAU filed did not include. However, this subsequent filing must be done within the prescribed period or within the extension period.
The IPOPHL has issued several other Memorandums which can be seen below:
- Memorandum Circular No. 17-011: Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks of 2017
- Memorandum Circular No. 17-012: Expediting the Trial of Cases by Amending Certain Provisions of the Regulations on Administrative Complaints for Violation of Law Involving Intellectual Property Rights
- Memorandum Circular No. 17-013: Amending the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs
- Memorandum Circular No. 17-014: Amending further the IPOPHL Revised Fee Structure of 2017 (Memorandum Circular No. 16-012, S. 2016, as Amended by Memorandum Circular No. 17-02, S. of 2017) see here
For further information, please click here
Source: Hechanova & Co. Inc., Philippines Sep 20, 2017 (Newsletter Issue 16/17)Official Fees IncreaseThe National Institute of Industrial Property (INPI), by means of Resolution 311 E/2017 of July 18, 2017, as amended by Resolution 317-E/2017, implemented a significant, two-phase increase in trademark and other industrial property fees. The total increase in trademark fees amounts to approximately 40% average.
The first phase came into force on August 1, 2017, and the second phase will be effective as of October 1, 2017. For example, the renewal fees have increased from ARS 1,500 to ARS 1.950 as of August 1, 2017, and will increase again to ARS 2,100 as of October 1, 2017.
Some of the fees will not be increased again in the second phase. For example, the fee for filing a trademark application has increased from ARS 1,200 to ARS 1,700 as of August 1, 2017 and will not be increased in October.
Source: O'Conor & Power, Argentina and Estudio Gold, Buenos Aires, Argentina as contributor and Estudio Chaloupka, Buenos Aires, Argentina as verifier, INTA Bulletin, Sept. 1, 2017 of Vol. 72, No. 15 Sep 20, 2017 (Newsletter Issue 16/17)New Examination Guide Available NowThe United States Patent and Trademark Office (USPTO) informs on its website that the Exam Guide 2-17, "Merely Informational Matter," is now available on the Trademark Examination Guides page, along with the response to public comments on an earlier draft of the guide.
The guide clarifies the policies and procedures for examining certain types of proposed marks that consumers would view as merely communicating information other than the source of goods/services and thus fail to function as marks.
To help in determining whether a proposed mark functions as a mark, the guide:
- creates categories for some types of matter that may be considered merely informational
- sets forth relevant case law
- identifies when an examining attorney must refuse registration or require a disclaimer
- discusses an applicant’s response options
- provides over 20 pages of examples illustrating the concepts covered
This new exam guide supplements the current policies and procedures set out in Trademark Manual of Examining Procedure (TMEP) §1202.04.
Source: www.uspto.gov
Sep 05, 2017 (Newsletter Issue 15/17)
Accession to Madrid Protocol
On August 7, 2017, the Director General of WIPO notified the deposit by the Kingdom of Thailand, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol, the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit.
- in in accordance with Article 8(7)(a) of the Madrid Protocol, the Government of the Kingdom of Thailand, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol (1989) will enter into force, with respect to the Kingdom of Thailand, on November 7, 2017.
Source: www.wipo.int
Sep 05, 2017 (Newsletter Issue 15/17)GCC Trademark Law AdoptedOman has officially adopted the Gulf Cooperation Council Trademark Law (GCC Trademark Law) as of July 31, 2017.
The decision, which was promulgated by Royal Decree no. 33 of 2017, was published in the Official Gazette (Official Gazette No. 1204) on July 30, 2017.
The issuance of the Implementing Regulations by the trademark authorities are expected soon.
Source: JAH & Co. IP, Qatar Sep 05, 2017 (Newsletter Issue 15/17)
New Practice for Filing New Trademark Applications
The Industrial Property Office of Bahrain (IPO) set a new practice to file new trademark applications in Bahrain, as it will no more accept the P.O. Box address only for filing new trademark applications in Bahrain. Instead, the complete address of the applicant (building name, number, and street name) should be mentioned in the application form.
This new practice will be also reflected on the Power of Attorney.
Source: www.agip.com
Sep 05, 2017 (Newsletter Issue 15/17)New Examination Guidelines for Registration of IP License Agreements On July 11, INPI Resolution 199/2017 has been published. The new examination guidelines for registration of industrial property license agreements and registration of integrated circuit topography, technology transfer and franchising.
The new guidelines are in line with the changes implemented through Normative Instruction No. 70/2017, effective since July 1, 2017. According to the guidelines the process of registration is simplified, and also, it warranties the legal autonomy to the parties' will.
For more information, please see the full text of Resolution INPI nº 199/2017, published in the Magazine of Industrial Property (RPI) nº 2427 here
Source: www.inpi.gov.br Sep 05, 2017 (Newsletter Issue 15/17)
Official Fees Slightly Increased
New official fees are applicable in the Industrial Property Office as from September 1, 2017, according to the Decision No. 780/2017 of the Management Board of the IP Office and the Government Regulation No. 1098/2008.
All official fees have been adjusted in accordance with the inflation rate of the preceding year. There are no other changes either in the structure or level of the official fees.
The new official fee for filing a trademark application is now EUR 124.45 and EUR 31.55 for each additional class. Registration and publication fees are included in the application.
In general, the costs for industrial desings, models and patents have also increased.
Source: www.sgcr.pt and www.inpi.pt
Sep 05, 2017 (Newsletter Issue 15/17)
Electronic Gazette Implemented
The National Institute for the Defense of Competition and Protection of Industrial Property (INDECOPI) launched the Electronic Gazette of Industrial Property which was approved by Supreme Decree Nº 071-2017-PCM in force since June 30, 2017.
The Gazette is a digital tool for the publication of applications for registrations of distinctive signs, inventions and new technologies. The publication appears on a daily basis.
INDECOPI is responsible for the content of trademark applications and the applications related to other elements of Industrial Property.
However, the applicants are responsible of monitoring the content of the Electronic Gazette. If the applicant detects a material error in the content of the electronic publication, an amendment shall be requested before INDECOPI within the term to file opposition, i. e., 30 working days. The rectification does not override the previous publication.
Source: www.clarkemodet.com
Jul 25, 2017 (Newsletter Issue 14/17)New Rule on Revivals, Reinstatements, PetitionsThe United States Patent and Trademark Office (USPTO) has issued a final rule titled "Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director."
The rule has been published in the Federal Register (82 Fed. Reg. 29401) and became effective on July 8, 2017.
The changes will permit the USPTO to provide more detailed procedures regarding the deadlines and requirements for requesting revival, reinstatement, or other action by the Director. These rules will thereby ensure that the public has notice of the deadlines and requirements for making such requests, facilitate the efficient and consistent processing of such requests, and promote the integrity of application/registration information in the trademark electronic records system as an accurate reflection of the status of applications and registrations.
For more information, please see here
Source: www.uspto.gov Jul 25, 2017 (Newsletter Issue 14/17)Geographical Indications Regulations Soon EffectiveThe Intellectual Property Office of New Zealand (IPONZ) informs that the Government has approved the Geographical Indications (Wine and Spirits) Registration Regulations 2017.
The Regulations set out the procedure for examining and registering a geographical indication under the Geographical Indications (Wine and Spirits) Registration Act 2006. The Act and Regulations will come into force on July 27, 2017.
After this date it will be possible to apply to register a geographical indication in New Zealand. The registration process, and the Register of Geographical Indications, will be administered by IPONZ.
For more information, please click here
Source: www.iponz.govt.nz
Jul 25, 2017 (Newsletter Issue 14/17)E-Filing Now PossibleOn June 6, 2017, the Kyrgyz Patent Office has announced the beginning of acceptance of the electronically filed applications for registration of intellectual property objects in a test mode. Thus, applications and attached documents can be submitted electronically at the following address http://patent.kg/service.
The date and time of receipt of applications and attached documents will be the date and time registered by the server of the Patent Office. Acceptance of applications is available 24/7.
The electronic filing in the test mode will operate until the introduction of an electronic digital signature which is expected to be introduced by the end of 2017. During the test mode of the e-filing system the applications should be followed by submission of the originals in a paper version.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jul 25, 2017 (Newsletter Issue 14/17)
New Trademark Review Hearing System Launched
The Trademark Review and Adjudication Board (TRAB) decides on review procedures filed against decisions by the Trademark Office. Up to date, these TRAB review procedures were strictly written procedures.
Recently the China State Administration for Industry & Commerce (SAIC) has issued its Rules on TRAB Hearings in Trademark Review Cases, which came into effect on the date of their publication, May 4, 2017.
Even though the possibility of holding a hearing was written into the existing legislation, hearings were in practice never held. It is hoped that this new possibility to request a hearing will be beneficial for the Chinese trademark practice.
Source: Hogan Lovells, Hong Kong/China
Jul 25, 2017 (Newsletter Issue 14/17)Business Guidance for IP (Unjustified Threats) Act Now PublishedThe UK Intellectual Property Office (IPO) informs that the Intellectual Property (Unjustified Threats) Act received Royal Assent on April 27, 2017. A Commencement Order is required for the Act’s measures to be brought into force which is expected to take place on October 1, 2017.
The Act will make the law of unjustified threats more easily navigable for rights holders, professional advisers and third parties alike.
IPO has now published a business guidance on the Intellectual Property (Unjustified Threats) Act 2017. The guidance sets out the changes that have been made to the legal framework, and the expected impacts on IP rights holders, and third parties, as well as businesses, including legal services.
The business guidance can be accessed here
Source: www.gov.uk Jul 25, 2017 (Newsletter Issue 14/17)
Accession to Hague Apostille Convention
On July 10, 2017, Tunisia deposited its instrument of accession to the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention).
The Apostille Convention will enter into force for Tunisia on March 30, 2018, in relation to those Contracting Parties which have not objected to the accession, and following the six-month period pursuant to Article 12.
Source: www.hcch.net
Jul 11, 2017 (Newsletter Issue 13/17)Provisions on Trademark Judicial Interpretation in ForceThe Supreme People's Court (SPC) adopted the "Provisions on Several Issues Concerning the hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights" which became effective on March 1, 2017. This long-awaited Provisions concern the revised trademark law.
The Provisions bring useful guidance for the Beijing IP Court (1st instance) and the Beijing High Court (2nd instance), in relation to appeals filed against decisions of the Trademark Review and Adjudication Board (TRAB).
The 31 articles of these Provisions address a variety of situations, the main ones being related to “absolute grounds” of refusal, “relative grounds” of refusal, “bad faith” applications, other prior rights (copyright, name right etc.), the “use” of a trademark, and several procedural issues.
For further information please check the article of Wan Hui Da Law Firm here
Source: Wan Hui Da Law Firm, China Jul 11, 2017 (Newsletter Issue 13/17)Draft Bill Partially Amending Trademark Act PublishedThe Spanish Patent and Trademark Office (SPTMO) has published a Draft Bill (in Spanish only) that partially amends the Spanish Trademark Act 17/2001 of 7 December in order to incorporating Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015.
The most important modifications proposed are the following:
-Remove the difference between a notorious and a well-known trademark
-In opposition proceedings, the applicant shall be entitled to require proof of use of the earlier trademark on which the opposition is based.
-Remove the graphical representation requirement from the definition of a trade mark.
-The SPTMO shall be competent to directly rule on the invalidity or revocation of national trademarks.
All the modifications, with the exception of the introduction of the administrative cancellation proceedings before the SPTMO, will enter into force on January 14, 2019 upon the adoption of the Draft Bill.
Source: ABG Patentes, Spain Jul 11, 2017 (Newsletter Issue 13/17)Effect Date of Protection of IR of Industrial Designs ChangedOn May 30, 2017, WIPO received from the Spanish Patent and Trademark Office (OEPM) an official letter indicating that Patent Law No. 24/2015, of July 24, 2015, which came into force on April 1, 2017, introduced modifications to paragraphs 4 and 5 of Article 76 of the Law 20/2003 of July 7, 2003, on the Legal Protection of Industrial Designs.
As a consequence of those modifications, the protection conferred by the international registration of a design shall take effect in Spain from the date of its publication by the International Bureau, provided that said registration is not the subject of a refusal of protection.
The previous communication from OEPM concerning the declaration under Rule 18(1)(c) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement is withdrawn (please refer to Information Notice No. 12/2011).
The said withdrawal took effect on May 30, 2017.
For further information, please click here
Source: www.wipo.int Jul 11, 2017 (Newsletter Issue 13/17)Draft Trademark Regulations Open to Public Comment Until July 21The Canadian Intellectual Property Office recently released its draft Regulations under Canada's new Trademarks Act. They are open to public comment until July 21, 2017. This is the next step to the enactment of the amended Trademarks Act.
The proposed amendments to the Regulations are intended to facilitate Canada’s adherence to three international trademark treaties, namely the Singapore Treaty, the Nice Agreement, and the Madrid Protocol. They also clarify procedures and time frames for the filing and prosecution of Canadian trademark applications, as well as for opposition and section 45 proceedings.
The proposed amendments will implement a number of key changes in Canadian trademark practice also impacting foreign applicants.
Source: Joli-Coeur Lacasse Avocats, Canada Jun 28, 2017 (Newsletter Issue 12/17)Guidelines for Filing Well-Known TM Applications The new Trade Mark Rules, 2017, empowered the Registry to declare a mark as well-known if any applicant or proprietor is interested. On May 22, 2017, the Office of the Controller General of Patent, Designs and Trademarks released a checklist for filing a well-known trademark.
In case the mark is determined as well-known, the same will be notified in the Trade Marks Journal and included in the list of well-known trademarks made available on the official website.
Before determining a trademark as well-known, the Registrar may invite objections from the general public to be filed within thirty days from the date of invitation of such objection.
Nonetheless, the Registrar may, at any time remove the trademark from the list of well-known marks after giving an opportunity of hearing to the concerned party if it is found that a trademark has been erroneously or inadvertently included in the said list.
For further information on the checklist, please click here
Source: S. S. Rana & Co., India Jun 28, 2017 (Newsletter Issue 12/17)
Accession to Trademark Law Treaty and Regulations
On May 29, 2017, the Ministry of Foreign Affairs published the ratification of the Trademark Law Treaty and the Regulations (TLT) which was made by the President of the Republic of Guatemala.
The Treaty will apply to all product and service trademarks if they are visible signs, (including three-dimensional trademarks) except holograms and non-visible signs, and specially sound marks and olfactory marks.
The requirements and procedures of the applications for registration of trademarks will be still regulated on the Law on Industrial Property and its Regulations, until the necessary modifications which result from the implementation of the aforementioned Treaty are made.
Source: Arias, Guatemala
Jun 28, 2017 (Newsletter Issue 12/17)Updated TBMP AvailableThe United States Patent and Trademark Office (USPTO) informs that they have issued an updated Trademark Trial and Appeal Board Manual of Procedure (TBMP), which describes current practice and procedure under the applicable authority. The new TBMP is available on the Trademark Trial and Appeal Board webpage here
The update incorporates amendments to the Trademark Rules of Practice, Trademark Act and Federal Rules, and relevant case law between September 30, 2016, and March 3, 2017.
Source: www.uspto.gov
Jun 28, 2017 (Newsletter Issue 12/17)Feedback on Proposed Industrial Design and TMs Regulations Required The Canadian Intellectual Property Office (CIPO) is seeking feedback on the proposed regulatory amendments to the Industrial Design Regulations, the Trade-marks Regulations and the Patent Rules.
The timeframe for the consultations are from:
- June 19 to July 14, 2017, on the proposed Industrial Design Regulations
- June 19 to July 21, 2017, on the proposed Trade-marks Regulations
The proposed Trade-marks Regulations draft which is designed to implement amendments to the Trademarks Act passed in 2014 and can be seen here, while the proposed Industrial Design Regulations can be accessed here
Comments can be sent to the email address 'ic.cipo-consultations-opic.ic@canada.ca', indicating in the subject line the Regulations to which the submission applies, i.e. Trademarks or Industrial Designs.
CIPO will make a consultation report available on their website following the close of the consultation period. All comments received will be considered public.
Source: www.ic.gc.ca Jun 28, 2017 (Newsletter Issue 12/17)Consultation Phase on NAFTA ExpandedThe Government of Canada has announced that they have expanded the online consultations with Canadians on the renegotiation of the North American Free Trade Agreement (NAFTA).
NAFTA includes a dedicated chapter (Chapter 17) on Intellectual Property (IP). As a result, the Government of Canada would encourage stakeholders with an interest in IP trade agreement rules to share their ideas, experiences and priorities on the modernisation of NAFTA by visiting www.international.gc.ca/nafta.
Alternatively, officials of the Government of Canada can be contacted via the email address 'Consultations-TMI@international.gc.ca'.
Source: www.international.gc.ca Jun 28, 2017 (Newsletter Issue 12/17)Guidelines for Proof of Use in Opposition ProceedingsAccording to the New IP Law 2017, the Turkish Patent and Trademark Office (Türkpatent) can ask, at the applicant’s request, for proof of the opponent’s use. If the opponent does not prove its use, the opposition will not be accepted.
Türkpatent has now published guidelines for such proof of use in opposition proceedings assisting both the applicants who shall claim proof of use and the opponents who shall present evidence of use in oppositions proceedings.
The Guideline states that within a one month time frame, the applicant can not only submit his counter arguments but with the same form can also ask the opponent to prove use of the mark upon which the opposition is based. Or alternatively, should the applicant not submit any counter arguments, evidence of such use can be requested by a letter to Türkpatent using the wording provided in the Guideline.
For further information, please check the article from our Country Index partner Ofo Ventura here
Source: Ofo Ventura, Turkey Jun 14, 2017 (Newsletter Issue 11/17)
Draft Ordinance on IP Representatives Published
The Bulgarian Patent Office has released for public consultation a draft Ordinance on Industrial Property Representatives to be adopted by the Council of Ministers.
If adopted, the draft Ordinance would regulate the profession of IP representatives. It specifies the requirements for obtaining the necessary qualifications and for providing such services. Most notably, the Ordinance would make it possible for foreign IP representatives to exercise the profession in Bulgaria in compliance with the requirements of EU Directive 2006/123/EC on services in the internal market, and would also introduce mandatory professional insurance. The Ordinance would also recognize partnerships of IP representatives for the first time in Bulgarian legislation.
The draft Ordinance got criticized by AIPPI Bulgaria as it goes beyond the scope of what the Law on Patents and Industrial Designs has defined. Further, the Ordinance contradicts with the Law on Recognition of Professional Qualifications. AIPPI Bulgaria insists on the withdrawal of the draft and the resumption of an open discussion among stakeholders.
Source: www.petosevic.com
Jun 14, 2017 (Newsletter Issue 11/17)New Trademark Laws in the Cayman Islands Effective on August 1,2017The new Trade Marks Law 2016 will be implemented in the Cayman Islands on August 1, 2017.
The current law provided only for the registration of trademarks previously registered in the UK, or as a European Union Trademark, or as an International Registration designating UK, which results in extension of identical rights in Cayman with no provision for opposition.
The new Law will make it possible for trademark proprietors to file for trademark protection without the need to re-register a UK or EUTM registration in the Cayman Islands.
Cayman trademark registrations based on UK/EU trademark registrations will continue to have effect until the next renewal/expiry date and will fall due for renewal on the same date as the underlying UK/EU trademark.
Future trademark renewals can be made independently. The renewal period of marks filed under the new law will be 10 years from the date of filing.
For further information, please check the article from Ms Sophie Davies from HSM IP, Cayman Island, which can be accessed here
Also detailed and updated information on the Cayman Islands can be seen in our guide on Dependent Territories here
Source: HSM IP, Cayman Islands and Caribbean IP, USA Jun 14, 2017 (Newsletter Issue 11/17)Online Filing System of Trademarks LaunchedA new online trademark registration system was launched, allowing for faster and more convenient filing. The E-Filing platform can be used only for new trademark application, while post-application actions must be filed in person at the Department of Intellectual Property. This system is optional, as it will operate alongside traditional paper-filing in person.
According to the Prakas (Regulation) issued by the Ministry of Commerce on May 4, 2017, an applicant with permanent residence or principal place of business inside Cambodia can use this system. The applicant has to request in writing to the Department of Intellectual Property for a user name and password. For foreign applicants, the system can only be used through a registered Cambodian trademark agent.
Source: Abacus IP, Cambodia
May 31, 2017 (Newsletter Issue 10/17)
Design Protection Act Amended
Several amendments to the Design Protection Act were published on March 21, 2017. The amendments will come into effect on September 22, 2017.
Important changes are the following:
- Grace period for design applications extended
The amended act extends the six-month grace period to one year. The amendment also replaces the text "when filing a response to an office action issued by KIPO" with "until KIPO issues a final decision whether to grant a design registration". As such, an applicant will be able to claim the grace period at any time while the application is pending.
- Proof of priority eased
Under the existing act, in order to claim priority an application must include drawings that are substantially identical to the drawings in the foreign priority application and a copy of the priority application certified by the foreign government.
Under the amended act, KIPO will accept certain other documents to confirm the details of the foreign priority application.
- Increased penalties
Several fines will be increased such as the fine for perjury by a witness, expert witness or interpreter under oath before the Intellectual Property Trial and Appeal Board (IPTAB), the fine for falsely indicating that a design has been registered or applied and the fine for fraudulently obtaining a design registration or an IPTAB decision related to a design.
Source: www.kimchang.com
May 31, 2017 (Newsletter Issue 10/17)
Official Fees Increased
The Patent and Registration Office’s (PRH) increased the official fees for trademarks. The fee increase went into force on May 1, 2017.
The official fee for filing a trademark application for the first class is now EUR 225 if made online, and EUR 275 if made by paper form. The official fee for each additional class is now EUR 100.
Source: www.prh.fi
May 31, 2017 (Newsletter Issue 10/17)Comments on Streamlined Cancellation Procedure RequiredThe United States Patent and Trademark Office (USPTO) is exploring the possibility of a streamlined version of trademark cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Streamlined proceedings would enable third parties to more efficiently challenge marks they believe are not in use in commerce.
The streamlined proceedings would:
- Be limited to the grounds of abandonment and nonuse;
- Permit discovery only as to standing;
- Require each party to submit its proof with its pleading; and
- Move on an accelerated schedule.
The comments should be submitted no later than August 14, 2017.
More information can be seen here
Source: www.uspto.gov May 31, 2017 (Newsletter Issue 10/17)
Arabic Language on Signboards Required
The provisions of Article 5 of Law no. 35 of 2015 for the protection of the Arabic language introduced in Jordan became enforceable as of September 1, 2016.
The Article allows for the use of a language on the signboards other than Arabic as long as the Arabic part appears in a much bigger font. The scales are not explicitly identified in the Law. Violations will be subject to fines ranging between USD 1,400 and USD 4,200.
Since use of a mark in Arabic will no longer be a matter of choice but a statutory requirement governed by local regulations, it is advisable to register the transliteration in the local script in addition to the registration in the Latin version.
Several commercial establishments have now received a warning for not including the Arabic rendition of their marks on the signboards.
Source: www.sabaip.com
May 31, 2017 (Newsletter Issue 10/17)Legislative Acts AmendedThe Law of the Republic of Uzbekistan "On Amendments and Additions to Certain Legislative Acts of the Republic of Uzbekistan" ZRU-429 dated April 18, 2017 has amended the Civil Code of the Republic of Uzbekistan, the Law "On Trademarks, Service Marks and Appellations of Origin" as well as the Law “On Competition”.
The main change in the Civil Code of the Republic of Uzbekistan is the introduction of an Article relating to exhaustion of rights. According to the mentioned Article it is stipulated that a violation of an exclusive trademark right shall not be considered as use of the trademark in relation to goods or services which were legally introduced into civil circulation by the trademark owner directly or upon his consent. This means that the principle of national exhaustion of rights shall be applicable in Uzbekistan. Another Article specifies that a trademark may be invalidated in case of non-use during the last five years, while the previous version of the Civil Code stated the period of any five years.
The main changes introduced into the Law "On Trademarks, Service Marks and Appellations of Origin" are the following:
- The trademark registration will be also published on the website of the Patent Office next to the publication in the Official Gazette.
- The use of a trademark shall be considered now also as use in for example in advertisements, printed publications, displaying during exhibitions, using on signboards, letterheads, labels, packages of goods manufactured, offered for sale, sold or otherwise introduced into civil circulation or stored and/or transported with this purpose, or imported into the territory of Uzbekistan; on the documentation related to introduction of goods into civil circulation; in a domain name.
The amended law also reflects provisions as for exhaustion of rights and non-use of a trademark as amended in the Civil Code and mentioned above.
The main change introduced into the Law “On Competition” relates to adding a more comprehensive explanations as to what shall be regarded as unfair competition and introduction of a confusingly similar trademark.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine May 31, 2017 (Newsletter Issue 10/17)Practice Changes / Colour as a Registrable Feature of Industrial DesignThe Canadian Intellectual Property Office (CIPO) recently announced six changes to its Industrial Design Office (the Office) practices with the objectives of improving service to clients, reducing administrative burden, and modernizing our practices to align with international norms. The changes were based largely on feedback from the Industrial Design Practice Committee (IDPC).
The changes included the following:
- Computer-generated animated designs
- Colour as a registrable feature of an industrial design
- Reducing time limits to respond to office actions
- Search to assess originality where there is a priority claim
- New notices of possible refusal
- Delaying the registration of an application
Under the new practice, CIPO will accept color as registrable subject matter of an industrial design. In doing so, color will be permitted to be an additional feature in combination with the features of shape, configuration, pattern or ornament and any combination thereof.
Drawings or photographs filed in respect of an application for registration of a design that includes colour as a feature must be filed in paper form and in colour. Current technical limitations prevent the Office from accepting colour drawings or photographs in electronic form. The Office will scan the paper drawings or photographs to display them in colour on the online Industrial Design Database and in registration packages. In the event of a discrepancy between the colour in the paper file that was submitted to the Office and the colour displayed online or in the registration packages, the paper file will be considered to be the best representation of that colour.
More information can be accessed here
Source: www.ic.gc.ca May 26, 2017 (Newsletter Issue 10/17)Accession to Hague Agreement ExpectedThe United Kingdom Minister for Intellectual Property has recently stated that the UK will ratify and join the Hague Agreement for International Design registrations by March 31, 2018. The service is due to come into operation on April 6, 2018. Currently, UK-based applicants are able to apply for an International Design by virtue of the UK being part of the EU. This separate ratification by the UK will ensure that UK-based applicants will continue to be able to file International Design registrations after the UK leaves the EU.
Under the Hague Agreement it is possible to submit a single ‘International’ design application which covers selected states that are members of the Hague Agreement. By virtue of the UK joining the Hague Agreement, the UK will also be individually selectable from April 2018 as a designated state rather than only via an EU designation.
Source: Boult Wade Tennant, United Kingdom
May 17, 2017 (Newsletter Issue 9/17)
Bill on Ease of Settling Commercial and Other Disputes Pending
The Judicial Laws Amendment (Ease of Settling Commercial and Other Disputes) Bill of 2016 is currently pending Zimbabwean parliamentary debate. The purpose of the Bill is to amend sections of the High Court Act, the Magistrates Court Act and the Small Claims Court Act with a view to speed up and to facilitate the settlement of disputes, particularly disputes of a commercial nature.
The Bill proposes that the Intellectual Property Tribunal, which was constituted in terms of the Intellectual Property Tribunal Act, be declared a specialised division of the High Court. The Bill also provides for hearings in court or in chambers to be conducted by way of use of electronic devices or other means of communication subject to agreement between the parties, if a party cannot be physically present at the hearing. This is referred to in the Bill as “virtual sittings”. Provision is also made for the electronic authentication of Court documents and electronic access to records filed with the Courts.
The Bill is perceived as an attempt to bring legal proceedings in Zimbabwe up to speed with the realities of the digital era and to facilitate the settlement of matters in a speedy and effective manner.
www.adamsadams.com
May 17, 2017 (Newsletter Issue 9/17)
Plain Tobacco Packaging from 2020
On February 15, 2017, the Slovenian Parliament unanimously adopted the new Act on the Restriction on the Use of Tobacco and Related Products (“Tobacco Act”) that came into force on March 11, 2017.
With the new Tobacco Act, Slovenia has implemented the Directive 2014/40/EU (“Tobacco Products Directive”) into its legislation. Although the plain packaging provisions of the Tobacco Products Directive are not mandatory, Slovenia opted to introduce them and joined the group of countries with restrictive tobacco legislation. Plain packaging will become obligatory in Slovenia as of January 1, 2020.
Source: www.petosevic.com
May 17, 2017 (Newsletter Issue 9/17)EAEU Customs Code SignedThe Customs Code of the Eurasian Economic Union (EAEU) is to be expected to enter into force this year, as the last EAEU member state, Belarus, signed the Code on April 11, 2017.
All other member states signed The Customs Code in December 2016. However, the Code still needs to be ratified by all five members – Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
The new Code provides for the establishment of the EAEU Customs Register that will be kept by the Eurasian Economic Commission (EEC) and that will exist alongside national customs registers.
For further information, please see the article from Ms Julia Zhevid and Ms Tatyana Kulikova of PETOŠEVIĆ which can be accessed here
Source: www.petosevic.com May 17, 2017 (Newsletter Issue 9/17)
Forecasting Tool by USPTO Implemented
The United States Patent and Trademark Office (USPTO) has implemented the Forecasting tool for trademarks.
The USPTO is the first IP office outside the EU to adopt the tool as one of its forecasting methodologies. Twenty-one EU IP offices across the EU Intellectual Property Network use the Forecasting tool already.
Source: www.euipo.europa.eu
May 17, 2017 (Newsletter Issue 9/17)
Designation of Zimbabwe in International Registration Possible Now
The Trade Marks (Madrid Protocol) Regulations, 2017 were published in the Government Gazette of April 13, 2017. Both Houses of Parliament passed the resolutions approving the Trade Marks (Madrid Protocol) Regulations. The Regulations came into force on April 13, 2017. By this it is now possible to designate Zimbabwe in an International Registration.
The opposition period for international registrations designating Zimbabwe is 2 months from the date of publication in the Zimbabwe Industrial Property Journal.
Source: Honey & Blanckenberg, Zimbabwe
May 17, 2017 (Newsletter Issue 9/17)
Individual Fee when Designating BN
On April 3, 2017, Brunei Darussalam has deposited the declaration that it wants to receive an individual fee instead of a share in the revenue produced by the supplementary and complementary fees when Brunei is designated in the international registration or with the renewal of any such international registration.
The said declaration will enter into force on July 3, 2017.
Source: www.wipo.int
May 17, 2017 (Newsletter Issue 9/17)Accession to Hague System for the International Registration of Industrial DesignsOn April 3, 2017, President Vladimir Putin signed the law on ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
Russia signed the Geneva Act on July 6, 1999, but has not completed the domestic procedures necessary to adopt it as an international agreement of the Russian Federation.
Now, finally, after 18 years, the agreement has been ratified and after complying with formalities Russia will become a party to the Hague System for the International Registration of Industrial Designs.
The law on ratification will enter into force on October 1, 2017. After this WIPO will be notified of the ratification, and in 3 months the Russian Federation may be designated in international applications for registration of industrial designs. This may be expected soon but not earlier than January 1, 2018.
For more information, please see here
Source: Law Firm Gorodissky & Partners, Russia May 17, 2017 (Newsletter Issue 9/17)New TMEP AvailableThe USPTO has issued the April 2017 Trademark Manual of Examining Procedure (TMEP). This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before March 1, 2017.
This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict. For a complete list of changes, please see here.
Source: www.uspto.gov May 17, 2017 (Newsletter Issue 9/17)
Requirement for Declaration of Intention to Use When Designating Lesotho
On March 31, 2017, the Government of Lesotho notified the Director General of WIPO of the requirement for a declaration of intention to use the mark when Lesotho is designated in an international application or subsequently.
The notification made by Lesotho will become effective on June 30, 2017.
WIPO will modify the form MM2 and form MM4 accordingly.
Source: www.wipo.int
Apr 26, 2017 (Newsletter Issue 8/17)
Consultation on Proposed Legislation Changes Put on Hold
IP Australia informed on its website that the recent consultation on the Exposure Draft Intellectual Property Laws Amendment Bill 2017 and Regulations has been put on hold until after the Government has finalised its response to the Productivity Commission’s report into Australia’s intellectual property arrangements. This is because if any legislative amendments are required as a result of the Government’s response, two intellectual property Bills might be in Parliament at the same time, leading to great complexity and uncertainty.
Source: www.ipaustralia.gov.au
Apr 26, 2017 (Newsletter Issue 8/17)Request for Correction of Declaration of Standard CharactersSince January 6, 2014, an application for international registration of a trademark under the Madrid System, where the Benelux Office for Intellectual Property (BOIP) would be the Office of origin, must be filed using the Madrid e-Filing Module (“MeF”).
When this tool was introduced, it did not provide a box for applicants to check to declare that the mark should be considered as a mark in standard characters (“Declaration of Standard Characters”). Such box was made available in MeF on December 1, 2016, which means that in the period from January 6, 2014 to December 1, 2016, it was not possible for applicants to make such a declaration. It is optional for the applicant to make such declaration. However, if the applicant wants to make this declaration it must in principal be made at the time of filing the international application.
Holders who filed international applications within the dates mentioned above now receive the possibility to request a correction in the International Register, under Rule 28 of the Common Regulations to the Madrid Protocol (“Common Regulations”), to record a Declaration of Standard Characters in their international registration. There is no time limit to ask for this correction.
A request for such correction must be submitted through BOIP, using the available electronic form here
Further information can be found here
Source: www.boip.int
Apr 26, 2017 (Newsletter Issue 8/17)Modernised Trademarks Database ReleasedThe Canadian Intellectual Property Office (CIPO) informs that a modernised Canadian trademarks database has been released designed to improve the database functionalities by offering:
- redesigned layout and navigation
- single search interface
- refined search capabilities
- separate bilingual search tab
- restructured trademark details
The database can be accessed here
Source: www.ic.gc.ca Apr 26, 2017 (Newsletter Issue 8/17)Decisions on Opposition/Section 45 Proceedings Made Accessible NowThe Canadian Intellectual Property Office (CIPO) informs that decisions by the Registrar of Trade-marks on opposition and section 45 proceedings are available on Decisia.
Decisia is a web application for tribunals and boards, and is already used by several federal organizations to publish their legal decisions.
It will be possible to conduct exhaustive and advanced searches of decisions by the Registrar of Trade-marks with the web application. Also it will now be possible to do searches by member, hearing officer, application number, registration number and trademark.
To access the web application, please click here
Source: www.ic.gc.ca Apr 12, 2017 (Newsletter Issue 7/17)Draft of Trademarks (Madrid Protocol) Regulations 2017Zimbabwe Parliament has recently passed resolutions approving the draft Trademarks (Madrid Protocol) Regulations. Zimbabwe became a party to the Madrid Protocol in March of 2015.
For the purpose of the Trademarks (Madrid Protocol) Regulations, the Trade Marks Regulations 2005 and the Trade Marks Act [Chapter 26:04] (Trade Marks Act) apply (to the extent applicable and with all necessary modifications) to any holder of an international registration designating Zimbabwe, and to any applicant of an international application originating from Zimbabwe.
In the event of conflict between the provisions of the Trade Marks Regulations and Trade Marks Act and those of the Madrid Protocol and the Common Regulations thereunder, the provisions of the Madrid Protocol and the Common Regulations shall prevail.
The draft Regulations are now expected to be gazetted as law in a statutory instrument in order for the Protocol to be fully operational in Zimbabwe.
To access the draft, please click here
Source: Manokore Attorneys, Zimbabwe
Apr 12, 2017 (Newsletter Issue 7/17)Trademark Registration Certificates IssuedThe Libyan Trademarks Office is issuing registration certificates of the trademarks holding the filing numbers from 6,000 to 6,500. Given the current circumstances in Libya and the backlog of applications at the Trademark Office, the issuance of the registration certificates is expected to face delays.
Applicants who are interested in obtaining any official certificate proving that their trademark has been registered with the Libyan Trademarks Office can obtain an official testimony confirming the registration of any trademark whose term of opposition has passed without third party action.
Source: JAH & Co. IP, Qatar Apr 12, 2017 (Newsletter Issue 7/17)Official Trademark Fees Cut by HalfOn March 30, 2017, the Chinese Trademark Office announced its cut of the official fees by half, effective as of April 1, 2017.
The official fee for filing a trademark application is now RMB 300 for up to 10 goods/services in one class, and RMB 30 for each additional class.
Source: CHOFN Intellectual Property, China Apr 12, 2017 (Newsletter Issue 7/17)
Official Fees Increased
The Trademark and Patent Office of Andorra (OMPA) has announced a 7 percent increase in the official fees for all IP matters, effective in March 2017. This affects new applications only. Pending matters remain under the old prices before the increase.
The new official fees for filing a trademark application are now EUR 165,81 for up to three classes and EUR 25.58 for each additional class.
Source: NJQ & Associates, Jordan
Apr 12, 2017 (Newsletter Issue 7/17)White Paper on Great Repeal Bill PublishedIn March 2017 the Prime Minister formally started the process of the United Kingdoms’ withdrawal from the European Union (EU). The government has published a White Paper on the Great Repeal Bill. This will provide legal certainty by converting the body of existing EU law into United Kingdom (UK) law.
EU Trademarks (EUTM) continue to be valid in the UK while the country remains a full member of the EU. When the UK leaves the EU, a EUTM will continue to be valid in the remaining EU member states.
When the UK has left the EU, UK businesses will still be able to register an EU trade mark, which will cover all remaining EU Member States.
With regard to International Registrations UK businesses will continue to have access to the Madrid System when looking to protect their trademarks.
IPO informs that inquiries can be sent EUenquiries@ipo.gov.uk.
Source: www.gov.uk Apr 12, 2017 (Newsletter Issue 7/17)Administrative and Reduced Opposition Procedure NowSaudi Arabia has updated its opposition procedure from a legal to a purely administrative proceeding with the adoption of the Gulf Cooperation Council Trademark Law in the country. The oppositions are now filed with the Trademark Office instead of the Board of Grievances (first instance court) which used to be the case.
Further, the opposition period has been reduced from 90 to 60 days accordingly from the last publication date in the Official Gazette, not extendable.
Source: JAH & Co. IP, Qatar Mar 29, 2017 (Newsletter Issue 6/17)Change of Practice for Applicants Outside Paris Convention/WTOAs from February 1, 2017, the Icelandic Patent Office will demand a certified attest of a domestic registration according to article 33 of the Trademark Act no. 45/1997 in cases where the applicant is not a resident of a state which is party to the Paris Convention or the World Trade Organisation (WTO). It will also be sufficient to show evidence that the applicant’s company has operations in a member country of the Paris Convention or WTO or that an individual applicant has citizenship in a member country of the Paris Convention or WTO to comply with the requirements of article 33.1 of the Trademark Act. A list of countries that are members of the before mentioned agreements can be found here
Source: Tego IP Consulting, Iceland Mar 29, 2017 (Newsletter Issue 6/17)New Industrial Property Law in ForceA new Industrial Property Code Decree-Law No. 23/2016 is in force since February 9, 2017 in São Tomé and Príncipe.
The new law makes an extensive revision of the IP law that existed for more than twelve years in Sao Tome e Principe (Law No. 4/2001, of 31 December and Decree 6/2004 of 30 June) and adopts many concepts and solutions that are enshrined in the current Portuguese law and in European law. Among the changes introduced by the new law we point out the following:
In general
- Better organization and systematization of all matters covered by the law;
- Clarification of the rules on the right of priority and administrative procedures;
- The general term for oppositions or defenses is set at three months, extendable for another month;
- The new possibility of an administrative modification of decisions in the SENAPI, within three months after publication of a decision;
- A detailed definition of regimes for invalidation and revocation (in terms that follow closely the ones found in the Portuguese law)
- The new possibility of re-establishment of rights (restitutio in integrum);
- The new possibility of revalidation of expired rights due to lack of payment of fees;
- The adoption of new industrial property rights: utility models, supplementary protection certificates, topographies of semiconductor products, awards and logos;
- The adoption of criminal sanctions for the infringement of industrial property rights.
In the area of trademarks
- The recognition of three-dimensional marks and sound marks;
- The redefinition and clarification of the grounds for refusal of registrations, with a legal definition of the imitation concept;
- The special protection granted to well-known marks and marks with reputation in Sao Tomé and Príncipe or “in the World”;
- The acceptance of declarations of consent;
- The registration duration remains in 10 years but counted from the date of grant;
- The requests for revocation for lack of use are to be filed at the IP Office (SENAPI);
- The adoption of explicit provisions recognizing and regulating regional marks registered under ARIPO as well as international trademarks designating Sao Tome e Príncipe under the Madrid Protocol.
For more information, please see here
Source: Simões, Garcia, Corte-Real & Associados, Portugal Mar 29, 2017 (Newsletter Issue 6/17)
Reform to Trademarks Act Further Postponed
The Director General of the Trademarks Branch of the Canadian Intellectual Property Office has advised that the sweeping and ambitious reforms to Canada’s Trade-marks Act are now expected to come into force in early 2019.
Source: Gowling WLG, Canada
Mar 29, 2017 (Newsletter Issue 6/17)
New Patent Law in Force Soon
The new Patent Law 24/2015 will come into force on April 1, 2017, for all Spanish patent and utility model applications filed as of this date. Patents and utility models applied for on previous dates will not be affected by the provisions of the new law.
Among the most remarkable changes, a mandatory substantive examination of patentability is introduced and a 50% discount will be applied on most fees in the case of SMEs and entrepreneurs.
Source: Ponti, SLP, Spain
Mar 29, 2017 (Newsletter Issue 6/17)New Electronic System Introduced A new electronic system has been introduced in Bahrain for the filing of trademarks on an online platform. The salient features include the submitting of the applications with PoAs online and also the provision of adding conditions to the application; eg. disclaiming use of exclusive words etc. It is also meant to add flexibility to the local agents in handling such cases; furthermore it is anticipated that the system would be expanded to include all trademark related procedures in the near future.
Source: JAH & Co. IP, Qatar Mar 29, 2017 (Newsletter Issue 6/17)
Renewals of Trademarks Clarified
The Burundi Law No. 1/13 of July 28, 2009 relating to Industrial Property (the 2009 Law) requires the renewal of registered trademarks for consecutive ten-year periods and provides a grace period of six months for the late renewal of a trade mark. If the trademark is not renewed, its registration becomes invalid and may not be restored.
Prior to the entry into force of the 2009 Law, trademarks were registered for indefinite periods without the requirement for renewal. Though the 2009 Law has transitional provisions, the same are silent on the renewal due date for trademarks registered before the enactment of the 2009 Law.
On February 8, 2017, the Director of Industrial Property issued now an official communication confirming the current practice. Further, the Director indicated that all trademarks registered before the entry into force of the 2009 Law must be renewed before July 28, 2019, being ten years from the entry into force of the 2009 Law.
Source: CFL Advocates, Kenya
Mar 29, 2017 (Newsletter Issue 6/17)Substantive Changes to IP Law IntroducedMultiple changes to the Albanian Industrial Property Law debated since August 2016 were recently approved by Law No.17/2017, which entered into force on March 24, 2017.
According to the IPO, the main goal of these changes is to further harmonize Albanian law with the EU acquis and to create an equal level of enforcement to that existing in the EU. This is due to obligations deriving from Article 73 of the Albania-EU Association and Stabilization Agreement, in force as of April 2009.
Some of the multiple changes are the following:
- Functional and structural in the Albanian IPO have been changed. The IPO will be granted a larger role in enforcement procedures. The IPO will not only examine oppositions but will also handle different kinds of enforcement claims, including cancellation, invalidation and non-use actions and claims based on well-known status.
- Oppositions can now be also filed by holders of unregistered well-known trademarks and any person that contests a trademark applied for in bad faith.
- Observations by third parties have been introduced. Any third party that objects to the registration of a trademark has the right to submit a written observation, only on absolute grounds, to the Examination Division.
- Status for used marks and unregistered well-known marks now equal.
- “Trade Origin” to deceptive marks provision has been added.
For further information, please see the article from Ms Cami of PETOŠEVIĆ Albania which can be accessed here
Source: PETOŠEVIĆ, Albania Mar 29, 2017 (Newsletter Issue 6/17)Guide on Registered Designs Examination Practice IntroducedThe UK Intellectual Property Office (IPO) introduced on its website the guide on registered designs application and examination practice.
The guide explains the Intellectual Property practice under the Registered Designs Act 1949 and the Registered Design Rules 2006. It provides guidance on how design applications are examined in respect of national applications filed at IPO. Its aim is to ensure consistency of approach in respect of decisions made by the Registrar of Designs, and to provide guidance on examination practice and procedures for those seeking to register their designs.
For more information, please click here
Source: www.gov.uk Mar 14, 2017 (Newsletter Issue 5/17)Single Patent Attorney Regulatory Regime in AU and NZIP Australia informs that the single patent attorney regulatory regime between Australia and New Zealand came into force on February 24, 2017.
The key features of the new regime are:
- A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
- The Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
- The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
- Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
- The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trademarks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
- The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
- Applications made to IP Australia for all IP rights (patents, trademarks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
- A single address for service will not be available on February 24, 2017, for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future.
The new patent attorney regime is possible following the passage of legislation in both countries. In late 2016, the New Zealand Parliament passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 allowing for the regulatory regime to have effect in New Zealand. The Act along with the corresponding Australian legislation, Schedule 4 of the Intellectual Property Laws Amendment Act 2015, came into force on February 24, 2017.
Existing patent attorneys in both Australia and New Zealand were automatically registered as trans-Tasman patent attorneys on the commencement date.
Transitional arrangements will apply to those candidates who have started studying for knowledge requirements to become a patent attorney under the current New Zealand regime. The transitional arrangements can be found on the Trans-Tasman IP Attorneys Board's website.
Source: www.ipaustralia.gov.au Mar 14, 2017 (Newsletter Issue 5/17)Official Fees Reduced SoonThe Intellectual Property Office of Singapore (IPOS) informed that the official fees for patent and trademark protection will be lowered.
As from April 1, 2017, fees will be reduced for patent search & examination reports. In addition, brand owners applying for trademarks using a pre-approved list of goods and services will enjoy a substantial 30% discount. The fee will be SGD 240 per class.
For further information, please click here
Source: Namazie & Co., Singapore and www.ipos.gov.sg Mar 14, 2017 (Newsletter Issue 5/17)Draft of New Trademark ActThe German Federal Ministry of Justice and Consumer Protection (Bundesjustizministerium) has issued a draft act (available in German language only) to implement Directive (EU) 2015/2436 into German law (Gesetz zur Umsetzung der Richtlinie (EU) 2015/2436 des Europäischen Parlaments und des Rates vom 16. Dezember 2015 zur Angleichung der Rechtsvorschriften der Mitgliedstaaten über die Marken – Markenrechtsmodernisierungsgesetz – MaMoG).
The draft picks up the various provisions of the Directive and also contains a proposal for a new fee structure of the German Patent and Trademark Office (DPMA) including a one-fee-per-class-system.
For more information, please check here
Source: www.dlapiper.com Mar 14, 2017 (Newsletter Issue 5/17)Registration of Minimalist Designs Easier Now The Korean Intellectual Property Office amended the Design Examination Guidelines, effective as of January 1, 2017. The most notable of the amendments is that the creativity threshold for design registrations has been substantially lowered.
Previously, examiners often found it easy to reject design applications without citing any prior art, if the design was composed of well-known shapes or patterns, such as basic 2D and 3D geometric shapes. As a result, minimalist designs (which are designs intentionally stripped of superfluous elements) usually have been held to be unregistrable under the Design Protection Act and therefore not protectable.
According to the amended Guidelines, if the product design is composed in a manner that has never been seen before in the relevant field, the design can be deemed as creative regardless of whether it is comprised of basic shapes or patterns. The amended Guidelines also require examiners to cite supporting evidence when refusing a design application due to lack of creativity. Only very common manners of creation or obvious forms of expression in the product field are now exempt from the evidence requirement, such as a generic car design for a car toy.
For further information, please see the news of Kim & Chang here
Source: Kim & Chang, South Korea Mar 14, 2017 (Newsletter Issue 5/17)Accession to Paris Convention and Singapore TreatyWIPO notifies the accession of the Islamic Republic of Afghanistan to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention) and to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The accession of both, the Paris Convention and the Singapore Treaty, will enter into force on May 14, 2017.
Source: www.wipo.int
Mar 14, 2017 (Newsletter Issue 5/17)Single Patent Attorney Regulatory Regime in AU and NZIP Australia informs that the single patent attorney regulatory regime between Australia and New Zealand came into force on February 24, 2017.
The key features of the new regime are:
- A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
- The Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
- The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
- Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
- The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trademarks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
- The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
- Applications made to IP Australia for all IP rights (patents, trademarks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
- A single address for service will not be available on February 24, 2017, for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future.
The new patent attorney regime is possible following the passage of legislation in both countries. In late 2016, the New Zealand Parliament passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 allowing for the regulatory regime to have effect in New Zealand. The Act along with the corresponding Australian legislation, Schedule 4 of the Intellectual Property Laws Amendment Act 2015, came into force on February 24, 2017.
Existing patent attorneys in both Australia and New Zealand were automatically registered as trans-Tasman patent attorneys on the commencement date.
Transitional arrangements will apply to those candidates who have started studying for knowledge requirements to become a patent attorney under the current New Zealand regime. The transitional arrangements can be found on the Trans-Tasman IP Attorneys Board's website.
Source: www.ipaustralia.gov.au Mar 14, 2017 (Newsletter Issue 5/17)Draft Geographical Indication Bill PublishedThe Intellectual Property Organisation of Pakistan (IPO) prepared and published on its website the Draft Geographical Indication Protection Bill 2016.
There has been a need for comprehensive legislation because the current Trade Marks Ordinance 2001 provides only minimal provisions relating to the protection of geographical indications. The Draft Geographical Indication Protection Billl aims at improving protection and public awareness of geographical indication products in Pakistan and aligning local laws with international standards, such as TRIPS and the Paris Convention.
The draft bill published on the IPO website is open for discussion and public comment.
For more information, please check the article of our Country Index partner here
Source: Vellani & Vellani, Pakistan Mar 14, 2017 (Newsletter Issue 5/17)New Trade Mark Rules IntroducedThe New Trade Mark Rules have been published and came into force with effect of March 6, 2017. The most important amendments can be seen following:
- Fee increase: The fees for filing and prosecution has been increased by almost two-folds for certain matters. The official fee for filing a trademark application is now INR 10,000 instead of INR 4,000 previously. Start-ups receive discounts on the statutory fees.
- E-filing is promoted: The fee for filing a trademark application electronically is now INR 9,000.
- E-mail communication encouraged: The mode of communication by the Registry specifically includes electronic mail.
- Withdrawal of agent: Withdrawal of an agent in an application now requires the applicant to provide a new address for service within two months from the date of such withdrawal. Failure of such change in address will result in abandonment of the application.
- Documents showing use: Where use is claimed in an application, affidavit testifying use is required to be filed with supporting documents.
- Expedited registration: Expedited procedure now extends up till registration and is not limited to expedited examination.
- Extension for evidence removed: The extension of one month permissible while filing evidence in support of opposition and application by the opponent and the applicant respectively has been removed and is now non-extendable.
- Faster filing of counter statement: If the notice of opposition is obtained electronically, a counter statement can be filed without the same being served by the learned Registrar.
- Register of well-known marks: The Registrar can now determine whether a mark is well known or not after receiving a request of such from an interested proprietor on payment of INR 1,00,000.
- Cut of trademark application forms: The forms have been cut from 74 to 8.
For more information, please see the notification here
Source: S. S. Rana & Co., India Feb 22, 2017 (Newsletter Issue 4/17)Publication Fees for Trademark Recordals IncreasedThe Saudi Trademark Office issued an official circular, announcing an increase in the official publication fees for the following trademark recordal actions:
- Recordal of assignment or merger from SAR 500 to SAR 1,500
- Recordal of change of name and/or address from SAR 500 to SAR 1,500
- Recordal of license agreement or cancellation of the same from SAR 1,000 to SAR 2,000
- Recordal of mortgage agreement of a trademark or cancellation of the same from SAR 1,000 to SAR 3,000
- Amendment of goods and services by removing or restricting the list of goods and services from SAR 1,000 to SAR 1,500
- Amendment of the form of the mark for trademark registration from SAR 500 to SAR 1,500
- Cancellation of a trademark registration by owner SAR 3,000
- Change of name and address of agent for service from SAR 500 to SAR 1,500
The above increase in the official publication fees will come into force from February 19, 2017 and will be applied retroactively for recordals already filed with the Trademark Office.
Source: JAH & Co. IP, Qatar Feb 22, 2017 (Newsletter Issue 4/17)Effective Date for Rule Relating to Proving Use or Continued Use of Registered Trademarks DelayedOn January 19, 2017, the USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases” in the Federal Register, 82 Fed. Reg. 6259. The effective date of this rule has been delayed until March 21, 2017, in accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled “Regulatory Freeze Pending Review.” See 82 Fed. Reg. 10273.
Source: www.uspto.gov Feb 22, 2017 (Newsletter Issue 4/17)New Search System IntroducedIP Australia informs that Australian Trade Mark Search replaces the current search system (ATMOSS). By searching trademarks quickly and efficiently owners can make informed decisions about their business.
The new system, Australian Trade Mark Search, introduces image recognition and machine learning technology that detects objects within an image and makes instantaneous comparisons across Australia’s entire trademark database. It also features advanced options including a real time search counter and the ability to text search across a range of goods and services.
Source: www.ipaustralia.gov.au Feb 22, 2017 (Newsletter Issue 4/17)
New VAT Rate Applied
Pursuant to a ministerial decision amending the article No. 21 of the charges law, new VAT charges are now applied in Algeria.
The new VAT charges amount is 19 percent instead of 17 percent.
Source: www.agip.com
Feb 22, 2017 (Newsletter Issue 4/17)
Accession to Hague Apostille Convention
On January 19, 2017, the Republic of Guatemala deposited its instrument of accession to the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (Apostille Convention).
Following the usual procedural steps, the Convention will enter into force for Guatemala on September 18, 2017.
Pursuant to Article 12 of the Apostille Convention the Depositary shall give notice to the Contracting States of the accession of Guatemala.
Source: www.hcch.net
Feb 22, 2017 (Newsletter Issue 4/17)Pending Applications for Clarification ReleasedThe Office of the Controller General of Patents, Designs and Trademarks in India announced that the Office has reduced the Pendency in Examination of applications filed for the registration of a trademark to less than a month, by virtue of which applications filed in January 2017 are already in the process of examination. However, the Office has identified a list of applications that were filed before December 2016, and were not taken up for examination because of lack of complete documentation.
The list of applications that have been released by the Office can be found here
It should be noted that the applications are categorized into two groups:
- Group I: Due to incomplete digitization
- Group II: Due to formality check fail during examination and non-compliance with office direction
The Controller has directed all applicants or their agents whose application is falling in Group I to email the brief details of the application at pendingexam.tmr@nic.in, and those that are falling in Group II to take notice of non-compliance and resolve the same at the earliest.
Source: S. S. Rana & Co., India Feb 22, 2017 (Newsletter Issue 4/17)Official Fees IncreasedThe Icelandic Patent Office has announced that New Regulation no. 818/2016 on fees for patents, trademarks, designs, etc., has been adopted by the Minister of Industries and Commerce. The fee increase was effective January 1, 2017.
More information about the new regulation is available here
Source: www.patent.is Feb 01, 2017 (Newsletter Issue 3/17)CP 5 Common Practice ImplementedAs of January 1, 2017, the Swiss Federal Institute of Intellectual Property (IPI) became the 29th IP Office to implement the CP5 Common Practice on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components) into its guidelines.
The CP5 common principles have been incorporated into the updated version of IPI’s guidelines, which came into force on January 1, 2017.
Source: www.euipo.europa.eu Feb 01, 2017 (Newsletter Issue 3/17)Trademark Requirements RevisedThe Iranian Trademarks Registrar has revised the requirements for filing of a trademark application and oppositions in which a copy of the certificate of incorporation or extract of a commercial register has to be now legalized up to Consulate of Iran abroad.
The certificate of incorporation or extract of a commercial register needs to be submitted within 60 days from filing date provided that a simply copy is presented at the time of filing, this deadline may be extended by a period of extra two months.
Source: JAH & Co. IP, Qatar Feb 01, 2017 (Newsletter Issue 3/17)Move from 7th to 10th Edition of Nice ClassificationThe Qatari Trademark Office informed that they will stop following the 7th international classification of goods and services in which services under classes 43, 44 & 45 were classified under class 42. Under this old practice applicants seeking registration for services under Classes 42, 43, 44 and 45 it was possible to file one trademark application under Class 42 and only incur the cost of one class.
The Office will start accepting trademark applications for services that fall under classes 43, 44 and 45 as of February 12, 2017. Existing registrations or application will not be effected.
Source: JAH & Co. IP, Qatar Feb 01, 2017 (Newsletter Issue 3/17)
IP Laws Amended
The amended laws on patents, trademarks and industrial designs entered into force in Montenegro on January 18, 2017. Most amendments relate to terminology alignment with the new Law on Administrative Proceedings, but there are two other significant changes.
All three laws introduce administrative disputes against the Montenegro IPO decisions. Under the former laws, the Montenegrin Ministry of Economy had competence to rule in the second instance and further appeals were brought before the Administrative Court.
The amended laws abolish this practice after 6 years of being in force. Now, appeals are to be brought directly before the Administrative Court.
The reason behind this change is the complexity of the registration process, particularly in terms of trademarks, where reaching a decision often requires expert knowledge of examination practices and thorough analysis.
Another novelty in the amended Law on Trademarks is the possibility for parties to suspend a trademark opposition proceeding while negotiating an agreement. The parties have to reach an agreement within 6 months.
Requesting a suspension was previously possible under the provisions of the Law on Administrative Proceedings. However, the amended Law on Trademarks now clearly defines the parties’ obligations in such situations. If the parties realize they will not reach an agreement within 6 months, they can request the continuation of the proceeding. If no agreement is reached within these 6 months and the negotiations continue, the parties have to compose minutes of their negotiations and communicate them to the IPO.
Source: PETOSEVIC Montenegro
Feb 01, 2017 (Newsletter Issue 3/17)
Official Fees Slightly Reduced
The Israel Trademark Office reduced official fees on January 1, 2017. The new official fee for filing a trademark application is ILS 1,601 for the first class and ILS 1,203 for each subsequent class.
Official fees are updated once a year in Israel (each January 1st) and this is the third time that those fees are reduced after years of increase.
Source: Ezratty-Farhi Law Firm, Israel
Feb 01, 2017 (Newsletter Issue 3/17)Changes to Examination of Affidavits or Declarations of Continued Use or Excusable NonuseThe USPTO is changing its rules regarding the examination of affidavits or declarations of continued use or excusable non-use of trademarks filed under Section 8 of the Trademark Act, and on affidavits or declarations of use in commerce or excusable non-use under Section 71 of the Act, effective February 17, 2017.
The new rules will allow the USPTO to require additional proof of use to verify that a trademark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable non-use is claimed in whole or in part.
The USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register, 82 Fed. Reg. 6259, on January 19, 2017.
Source: www.uspto.gov
Feb 01, 2017 (Newsletter Issue 3/17)Some Renewal Dates AcceleratedThe transitional provisions of Antigua’s Trade Marks Act 2003 ('2003 Act') will shorten the life of some marks and require renewal by March 1, 2017, regardless of the renewal period in effect at the mark’s grant or last renewal. Potentially affected marks were applied for or last renewed between March 2003 and February 2007. Marks applied for or last renewed in March 2007 or beyond should already be governed by the 2003 Act’s ten-year renewal deadline.
The Trade Marks Act 2003 entered into force on March 1, 2007. The 2003 Act replaced two previous acts (one concerning U.K. mark extensions and one concerning local registrations) (collectively, the “Prior Acts”). The 2003 Act preserved marks registered under the Prior Acts but accelerated the next renewal deadline for some of the preserved marks. Previous certificates of registration or renewal may not reflect an accurate renewal date.
Pursuant to Section 27 of the 2003 Act, all trademarks registered under one of the Prior Acts must be renewed, at the latest, by March 1, 2017. Consequently, marks registered or renewed under one of the Prior Acts between March 2, 2003 and February 28, 2007, may be due for renewal earlier than previously anticipated. Because the application date governs the renewal date in Antigua & Barbuda, the registrations affected include marks applied for when the Prior Acts were in force but granted after the 2003 Act came into force in 2007.
The 2003 Act also provides a six-month grace period for late payment of renewal fees. Renewals of marks originally granted under the Prior Acts will be reclassified according to the Nice Classification system upon renewal.
Source: Caribbean IP, USA Feb 01, 2017 (Newsletter Issue 3/17)
Procedural Amendments for IR Designating
Antigua and Barbuda has deposited, on January 9, 2017, the following declaration:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months, and; under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), Antigua and Barbuda, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The said declaration will enter into force on April 9, 2017.
Source: www.wipo.int
Feb 01, 2017 (Newsletter Issue 3/17)Draft Industrial Property BillThe Government of Mauritius intends to adopt a comprehensive Bill covering all aspects of Industrial Property Rights, tentatively at the first session of the National Assembly in 2017. A Draft version of the Bill has been uploaded on the website of the Ministry of Foreign Affairs, Regional Integration and International Trade here which was open for public comments.
A brief summary of the proposed changes of the Bill is outlined below:
- Definition of a trade mark has been extended to also cover collective and certification marks. Specific grounds for the invalidation of a certification mark were added, but no similar provisions for collective marks are included.
- Grounds for refusal of a trade mark expanded, the most notable being that a mark shall not be registered if it consists exclusively of the shape of the goods or where the shape is necessary to obtain a specific technical result.
- Registration of a trade mark on the basis of honest concurrent use or other special circumstances may be permitted.
- The Bill provides that if a filing formality deficiency is notified, the applicant has two months to correct that deficiency. The filing date then becomes the date of correction of the deficiency, rather than the original filing date.
- The Bill also provides for the division of an application into two or more applications, which will then be treated independently, retaining the original filing date. (Useful when facing citations)
- A remedy for unregistered marks is provided – The earlier user of a trade mark that is neither registered nor the subject of a pending application, will entitle the owner to oppose a confusingly similar trade mark by presenting the relevant evidence of such use.
- International exhaustion of rights – the right to be accorded by the registration of a trade mark shall be exhausted once the product is put in the market by the registered proprietor or with his consent in Mauritius or any other country in the world.
More information can be seen here
Source: www.foreign.govmu.org and Adams & Adams, South Africa Feb 01, 2017 (Newsletter Issue 3/17)
Form Requirements Changed
The Trademark Office of the State Administration of Industry and Commerce recently published its announcement on the 'Cancellation of Form Applications for the Issuance of Registration Certificates for Domestically Registered Trademarks' on its website.
The Trademark Office will cancel the former requirements for the form “Application Form for Issuance of Trademark Registration Certificate.” A Certificate of Domestic Registered Trademark (i.e. a trademark that the applicant applies for with the Trademark Office that is approved for registration) will be issued through archival inquiry by stamping “Special Seal for Trademark Registration Certificate” on the trademark archives as proof of trademark registration. When requesting a Certificate of Domestically Registered Trademark, the applicant is required to submit a personal identification document and a trademark registration number. There will be no fee for a Certificate of Domestically Registered Trademark that is issued through archival inquiry. The announcement came into force on January 1, 2017.
Source: Watson & Band Law Offices, China
Jan 25, 2017 (Newsletter Issue 2/17)
New Trademark Law in Force
The new Trade Mark and Geographical Indication Law were passed by Parliament on October 27, 2016, and went into effect on November 28, 2016.
It introduces a number of significant changes to the registration procedure, protection and enforcement of trademarks, which are for example the following:
- Publication prior to examination: The trademark application will be published, for a period of two months instead of the previous three and the publication stage will occur before the substantive examination stage.
- The new law reduces the documentary requirements to file a trademark application.
- Non-traditional marks are introduced such as holograms, three-dimensional marks and sound marks.
- Official fees of trademark application filings will now be determined based on the classes of goods and/or services covered.
- The law allows to apply for a trademark similar to a generic trademark, as long as there is a distinguishable element.
- The renewal period has been changed to six months before the expiry of the trademark and a grace period has been introduced of six months after the end of the 10-year protection period.
- New Law introduces a provision on registration of international trademarks which will enable Indonesia to adopt the Madrid Protocol.
Pending Trademark applications which have been filed before the effective date of the new law will be processed based on the old Trademark Law.
Source: Baker McKenzie, Indonesia
Jan 25, 2017 (Newsletter Issue 2/17)Office Practices of Industrial Design ChangedThe Canadian Intellectual Property Office (CIPO) announced changes to six industrial design office practices.
The changes will improve service to clients, reduce administrative burden, and modernize our practices to align with international norms.
The practice changes are related to:
- applications for protection of computer-generated animated designs
- colour as a registrable feature of an industrial design
- time limits to respond to office actions
- the search to assess the originality of an application where there is a priority claim
- the issuance of notices of possible refusal
- delaying the registration of an application
A fact sheet providing an overview of the changes is also available.
For more information, please click here
Source: www.ic.gc.ca Jan 25, 2017 (Newsletter Issue 2/17)Procedures before IPI Harmonised/New Fee OrdinanceOn December 2, 2016, the Federal Council adopted amendments to the Trade Mark Ordinance, the Design Ordinance and the Patent Ordinance. These amendments harmonise procedures before the Swiss Federal Institute of Intellectual Property (IPI) to the extent permitted by applicable law. This is to simplify the system. The Federal Council has, at the same time, approved the formal total revision of the IPI's Fee Ordinance. The ordinance contains the fees applicable from January 1, 2017, for the revised Trade Mark Protection Act.
Many of the amendments are of an editorial nature and have no implications for applicants. These are the most important substantive changes:
- New rules and practice concerning the date of receipt of mailed items are to apply uniformly: for domestic mail with a legible postmark, the submission date will be considered the postmark date; if the postmark is illegible or missing, the submission date will officially be one working day prior to the date on which the item was received by the IPI calculated retrospectively for items sent by A Mail (first class) and three working days prior to the date on which the item was received by the IPI calculated retrospectively for items sent by B Mail (second class). For foreign mail, the submission date will officially be one working day prior to the date on which the item was received by the IPI calculated retrospectively.
- For joint applicants or owners of an IP right who have not designated a common representative or an addressee, the IPI will choose one of them to be the addressee. However, if one of the applicants or rights owners opposes this choice, the IPI must expressly request the parties concerned to designate an addressee themselves.
- Under the amended patent legislation, it will be possible for a licensee to submit an application for the registration of a license. Prior to this amendment, only the patent owner could request the registration – which is not the case under trade mark and design legislation.
- A surcharge will apply under the amended trade mark legislation if the renewal fee is paid after the trade mark has expired. This is already the case under design legislation. The surcharge obligation has, until this change, been linked to the date on which the request for renewal was submitted.
- Class fees will no longer be reimbursed if the trade mark is not registered.
For further information, please see here
Source: www.ige.ch Jan 25, 2017 (Newsletter Issue 2/17)
CIPO To Start Inviting Classifications of Goods and Services In TM Applications
The Canadian Intellectual Property Office (CIPO) has been permitting applicants to voluntarily classify their goods and services in recently filed and pending applications. In addition, CIPO announced that it will shortly start inviting owners of existing trademark registrations to classify the goods and services contained in their registrations according to the Nice Classification System. Courtesy notices to this effect are expected to be delivered as early as this month to trademark owners whose registrations are due for renewal on or after January 1, 2018. Where the registration lists a representative for service, the notice will be sent to the listed representative. Where no representative is listed, the notice will be sent directly to the owner.
Owners of registered trademarks are not obliged to respond to these courtesy notices at this time and there is presently no requirement in Canada that goods and services be categorized according to the Nice Classification. However, once classification does become obligatory, goods and services in existing registrations will have to be classified before the registrations can be renewed and goods and services in new or pending applications will require classification before the applications can proceed to registration.
Source: Gowling WLG, Canada
Jan 25, 2017 (Newsletter Issue 2/17)Requirement for Declaration of Intention to Use When Designating BNOn December 19, 2016, the Government of Brunei Darussalam notified the Director General of WIPO of the requirement for a declaration of intention to use the mark (DIU) when Brunei Darussalam is designated in an international application or subsequently.
The said notification will enter into force on March 19, 2017.
For further information, please see here
Source: www.wipo.int Jan 25, 2017 (Newsletter Issue 2/17)Official Fees Changed/TTAB Final Rule Effective On January 14, 2017, the Trademark final fee rule became effective. The new fee schedule will primarily impact trademark applicants and registration owners who use paper filings. The fee for filing a trademark application on paper increased e.g. from USD 375 to USD 600 per class.
More moderate is the increase of e-filings which will be now USD 400 per class using the regular Trademark Electronic Application System (TEAS Regular) option. The fees have been increased by USD 75. More information, see here
Further, the USPTO informs that the TTAB final rule became effective on January 14, 2017 too. The TTAB chart summarising the rule changes.
Source: www.uspto.gov Jan 25, 2017 (Newsletter Issue 2/17)Major Changes in New IP LawThe new Industrial Property Law, Industrial Property Law – Law no. 6769, (hereinafter “New Law”) has gone into effect in Turkey as of January 10, 2017.
The New Law replaces the Turkish Trademark Law (Decree Law No. 556 for the Protection of Trademarks) along with Patent Law (Decree Law No. 551), Industrial Design Law (Decree Law No. 554) and Geographical Indication Law (Decree Law No. 555).
Although the New Law has gone into effect, the previous Turkish Trademark Law will continue to be in effect in relation to processing trademark applications which were filed before January 2017, 10. Trademark applications which were filed on or after January 10, 2017 will be processed within the frame of the New Law.
Some major changes are:
- Introduction of Letter of Consent
- Reduction of opposition period to 2 months for applications filed on or after January 10, 2017
- Recognition of Proof of Use
- Bad faith as explicit ground for opposition and invalidity
- Renewal terms (regular and grace period) are calculated from the actual expiration date of the trademark registrations
- Regulation of cancellation proceedings as administrative proceedings
For further information, please see the article from our Country Index partner Istanbul Patent A.S. which can be accessed here
Source: Istanbul Patent A.S., Turkey
Jan 11, 2017 (Newsletter Issue 1/17)New Industrial Property Law Now in ForceThe New Industrial Property Law has been published in the Official Gazette and went into force on January 10, 2017.
Source: Istanbul Patent A.S., Turkey
Jan 11, 2017 (Newsletter Issue 1/17)11th Edition of Nice Classification AdoptedUSPTO informs that the Nice Classification, Eleventh Edition, version 2017 (NCL 11-2017), became effective as of January 1, 2017.
More information of the class headings and a link to noteworthy changes can be seen here
Source: www.uspto.gov
Jan 11, 2017 (Newsletter Issue 1/17)
Official Fees Increased
The Ministry of Finance of Vietnam has issued a Circular (No. 263/2016/TT-BTC) stipulating the official fees to be collected by the National Office of Intellectual Property of Vietnam (NOIP) for industrial property-related activities with effect from January 1, 2017. These fees will apply to patent, utility solution, industrial design, trademark, geographical indication and integrated circuit layout design applications received by the NOIP.
As of January 1, 2017, the official fee for filing a trademark application is VND 1,000,000 for one class for up to 6 items of goods/services. Each further class in the same application is VND 880,000 and each extra item of goods/services exceeding 6th is VND 170,000. The fee for registration is VND 120,000 and the fee for publication is VND 240,000 (for one class for up to 6 items of goods/services).
Source: Spruson & Ferguson, Singapore and Daitin & Associates Co., Vietnam
Jan 11, 2017 (Newsletter Issue 1/17)Correction to Final Rule Revising the Rules of Practice On October 7, 2016, the USPTO published in the Federal Register a final rule revising the Rules of Practice before the Trademark Trial and Appeal Board (TTAB) that will become effective January 14, 2017: 81 Fed. Reg. 69950.
The USPTO has now issued a correction to the final rule, published on December 12, 2016, in the Federal Register: 81 Fed. Reg. 89382.
The rules affected by the correction are: 37 CFR 2.123(a), 2.124, 2.126(c), and 2.145(d)(1) and (d)(3).
Source: www.uspto.gov
Jan 11, 2017 (Newsletter Issue 1/17)Kurdistan Trademark Office to Resume Normal FunctionIt is expected that the Kurdistan Trademarks Office is to resume normal function on January 12. 2017 with clear resolution on the implementation of new fees.
Iraq is divided into two trademark jurisdictions; Baghdad and Erbil where filings should be undertaken separately in order to secure trademark protection for the whole country; duly noting that the registries operate independently of each other and filing a trademark application in one jurisdiction does not automatically grant protection in the other. Erbil is the de-facto capital of the self-autonomous region of Northern Iraq- Kurdistan. This region represents immense interest to trademark owners around the world both in terms of covering the whole of Iraq and also for the tremendous potential it offers to brands.
Source: JAH & Co. IP, Qatar Jan 11, 2017 (Newsletter Issue 1/17)Structure of Official Fees Revised SoonThe Philippine Intellectual Property Office (IPOPHL) will increase its official fees in order to rationalise and streamline its fee structure to make adjustments in order to address inflation and rising operational costs and expenses, as well as to support additional mandates and services, and other developmental programs/projects and advocacies; and further to reduce or abolish redundant fees.
The new official fee for filing a trademark application will be PHP 1,200 for small entities and PHP 2,592 for big entities per each class. The publication fee will be PHP 900 for small entities and PHP 960 for big entities.
'Big entity' is any natural or juridical persone whose assets are worth more than one hundred million Pesos or any natural or juridical person which do not fall under the catecory of a small entity. 'Small entity' refers to any natural or juridical person whose assets are worth not more than one hundred million Pesos or any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled coroporations, state universities and colleges and government-owned or government-run schools.
The revised fee structure will be effective January 1, 2017.
For more information, please click here
Source: Platon Martinez Flores San Pedro & Leaño, The Philippines
Jan 11, 2017 (Newsletter Issue 1/17)IP Laws Passed in Cayman IslandsOn November 16, 2016, the Cayman Islands Government passed two IP laws: The Design Rights Registration Law, 2016 and The Patents and Trade Marks (Amendment) Law, 2016. Copies of the laws were published with Gazette No. 25 dated December 5, 2016.
The new Trade Marks Law has also been approved by Government and is expected to be published shortly on or before April 1, 2017.
The impact of The Design Rights is that the new law provides owners of original UK registered designs (UKRD) and registered Community designs (RCDs) with the opportunity to extend their rights to the Cayman Islands. The extension / re-registration process affords the owner with all the equivalent rights and remedies available to them in respect of that design right in the UK. The Cayman Islands does not have its own unregistered design right regime, so protection should be sought through the registration process.
The primary purpose of The Patents and Trade Marks (Amendment) Law is to essentially strip out all references to “trademarks” in the existing Patents and Trade Marks Law in order to make way for the new Trade Marks Law expected to come into force in 2017. Whilst under the new Trade Marks Law only national trade mark applications will be accepted in the Cayman Islands, the Patents law will continue only to provide for the re-registration/extension of UK Registered Patents to Cayman; there is no national registration route.
For more information, please see the article of the law firm HSM IP Ltd here
Source: HSM IP, Cayman Islands Jan 11, 2017 (Newsletter Issue 1/17)
Beijing IP Court Establishes Speedy Trial Panel
The Beijing IP Court recently established an internal Speedy Trial Panel for administrative litigation cases concerning the review of trademark application refusals. The panel will set the date for the court hearing and serve parties with subpoenas on the day on which the case is filed.
Trademark applicants can now apply to the court for a summary procedure, which will halve their legal fees and allow them to adduce evidence at the court hearing, instead of within a specific time limit. Further, applicants can brief the court about other relevant cases, such as:
- cases in which applied-for or cited trademarks have been tried;
- other cases of similar circumstances that could justify a consolidated court trial; or
- other cases whose application of law could serve as a reference.
The court will issue its judgment in cases tried via the summary procedure within 45 days. The summary procedure will:
- greatly improve the court's trial efficiency;
- allow judges to gain a full understanding of a case's background; and
- be more convenient for involved parties.
Source: Wan Hui Da Law Firm & Intellectual Property Agency, China
Jan 11, 2017 (Newsletter Issue 1/17)New GIs Law AdoptedOn November 17, 2016, the Geographical Indications (Wine and Spirits) Registration Amendment Bill was adopted by the New Zealand Parliament. It amended the Geographical Indications (Wines and Spirits) Registration Act which passed in 2006, but never entered into force.
The Amendment Bill introduces a 'sui generis' system for the protection of Geographical Indications (GIs) for wines and spirits in New Zealand, opened also to foreign GIs.
The full text of the Geographical Indications Amendment Bill is available here
Source: www.iponz.govt.nz and www.origin-gi.com Jan 10, 2017 (Newsletter Issue 1/17)Temporary Gap in the LawCurrently there is a temporary gap in the law with respect to non-use cancellation filings of trademarks in Turkey as the Constitutional Court has ruled that Article 14, which regulates use requirements of trademarks, of Turkish Trademark Law, Decree Law no. 556, is unconstitutional because it violated Article 91/1 of the Turkish Constitution. The ruling has been published in Official Gazette and went into effect as of January 6, 2017.
Article 91/1 of the Turkish Constitution regulates that basic rights, including right of ownership, cannot be regulated / limited by Decree Laws. Turkish Trademark Law, Decree Law no. 556, is a Decree Law which was passed by cabinet not by parliament.
However, the Turkish Parliament has already passed a new Industrial Property Law, on December 22, 2016, which will go into force with its publication in Official Gazette. The new law covers trademarks, patents, industrial designs, and will replace the current decree laws regulating these fields. By this, non-use cancellation action will be possible once the new law goes into effect.
The full text of the decision issued by Constitutional Court is available in Turkish on the website of Official Gazette here. The new law, Industrial Property Law, is available in Turkish on the website of Turkish Parliament here.
An article has been provided by our Country Index partner Istanbul Patent A.S. which can be accessed here
Source: Istanbul Patent A.S., Turkey
Dec 06, 2016 (Newsletter Issue 22/16)
Trademark Opposition System Considered
In June 2016, the Russian Patent Office (PTO) announced the beginning of public discussions on the introduction of the trademark opposition system in Russia. The main goal is to shorten the trademark registration process from the current 12-18 month period to 6-12 months.
The proposed trademark opposition procedure stipulates that, once a trademark application is received, the Russian PTO conducts a formal examination on absolute grounds within 3 months of receiving the application and if no absolute grounds for refusal are found, the application is published so that third parties can file oppositions, within the next 3 months.
If nobody objects to the application, the registration process continues; if an opposition is filed and the parties fail to reach an agreement within 6 months, the examiner considers the opposition and issues the final decision.
The current trademark legislation already provides for certain elements of the opposition procedure, as anyone may file a written notice against any published application before the issuance of the final decision.
The public discussion on the new procedure is still ongoing.
Source: www.petosevic.com
Dec 06, 2016 (Newsletter Issue 22/16)
Draft Trade Mark Law in Progress
Myanmar’s Draft Trade Mark Law is expected to be passed in 2017. This signals substantial changes to the current process which is based on common law and common practice rather than statute. The Draft Law intends to import structure and certainty into Myanmar’s trademark regime to generate greater protection and preservation of intellectual property and to meet international obligations derived from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement).
The new laws set the parameters for what constitutes a trademark and confirms that trademark protection will also be available for service marks, collective marks, certification marks and series of marks.
Under the new laws, a draft of which was made public in July. The proposed changes are:
- First-to-use system will be replaced by a first-to-file system aligning Myanmar with other ASEAN nations.
- Registration will confer protection for 10 years from the filing date, and is renewable every 10 years.
- Trademark owners will have the ability to file litigation in both civil and criminal actions against infringers in specialist Intellectual Property courts, which are in the process of being established.
- Local agents are still required to file trademarks on behalf of individuals or corporations whose ordinary residence or principal place of business lies outside Myanmar.
- Trademarks under the new laws must be distinctive and must not be registered in bad faith.
- Upon receiving the requisite forms and information the Registrar will perform an inspection and publicise the trademark inviting opposition within a defined period of time (30 days if the opponent resides in Myanmar and 60 days if the opponent resides outside Myanmar).
- A trademark can be cancelled if determined as unregistrable under the new laws. The grounds for cancellation also encompass non-use for three consecutive years, and therefore trademark owners should ensure they are actively using their trademarks in Myanmar.
To facilitate the move from first-to-use to first-to-file a transitional period of three years has been proposed to commence on the date the new law enters into force.
Owners who have a trademark recorded on the Registry of Deeds and Assurance must re-file their trademark with the Myanmar Intellectual Property Office (MIPO) when the new law comes into effect. This would preserve priority under the new system.
If the mark has not been re-filed with the MIPO, the record on the Registry of Deeds and Assurances will automatically expire when the transitional period concludes.
Source: DLA Piper LLP, Australia
Dec 06, 2016 (Newsletter Issue 22/16)Comments on Proposed Legislation Changes RequiredIP Australia is seeking input from interested parties about proposed changes to Australia’s IP legislation.
The aim of these proposed changes is to align and streamline the processes for obtaining, maintaining and challenging IP rights. Using similar processes for the different IP rights would make the IP system simpler and assist businesses dealing with more than one right.
Interested parties are invited to provide a written submission on the exposure drafts by January 22, 2017. Further information is available on the consultation page here
Source: www.ipaustralia.gov.au
Nov 22, 2016 (Newsletter Issue 21/16)
Official Fees Changed
Government Regulation No. 45 of 2016 on Non-Taxable State Revenue introduces a number of increases to the official fees.
The new official fee for filing a trademark application is IDR 2 million per class without limitation on the number of goods/services as of November 10, 2016.
Significantly, the official filing fee for trademark applications is now calculated based on the number of classes, regardless of whether the application is filed on a single-class or multiple-class basis.
Source: Tilleke & Gibbins International Ltd., Indonesia
Nov 22, 2016 (Newsletter Issue 21/16)
Appearance of UKIPO Digital Services Changed
The UK Intellectual Property Office (UKIPO) informed that two trademark services have been changed as of a consequence of the ongoing work of the digital services.
The changes are to improve the appearance of these services which include the
- response to trademark examination letter
- response to Right Start trademark examination letter
The changes have taken place on November 3, 2016.
Source: www.gov.uk
Nov 22, 2016 (Newsletter Issue 21/16)Non-French TMs on Public Signs to be Accompanied by French DescriptionThe Quebec Minister of Culture and Communications has announced that proposed amendments to the regulations under the Charter of the French Language will come into force on November 24, 2016. The amendments are intended to ensure the presence of French language on the storefront of businesses that display non-French trademarks on public signs, while purporting to respect the trademark exception.
The amendments provide that where a non-French trademark appears on a public sign, such must be accompanied by a generic term or a description of the products or services concerned, a slogan or any other indication in French informing consumers and passersby of the products or services offered. An appropriate display would give a permanent visibility to French, similar to that of the non-French trademark displayed and also be legible together with the non-French trademark. However, the display in the French language is not required to be at the same place, in the same number, in the same materials or in the same size as the non-French trademark.
The new regulations will apply to all new signage as of November 24, 2016. For existing signage, the regulations provide a 3-year grace period for business owners to comply.
For more information, please check here.
In parallel, the Office québecois de la langue française has prepared two illustrative guides that will be distributed to all businesses in Quebec. The first guide specifically deals with the display of trademarks, including the obligations with regard to the public display of trademarks exclusively in a language other than French, while the second guide addresses the general linguistic obligations of businesses.
Source: Smart & Biggar/Fetherstonhaugh, Canada
Nov 22, 2016 (Newsletter Issue 21/16)
Electronic Renewal of Design Registrations Possible Now
The Benelux Office for Intellectual Property (BOIP) informed that it is now possible to renew design registration via their website.
After logging into ‘My BOIP’, owners need to click on 'Renew a design registration'. Upon completion of the application, owners may pay directly with iDEAL, Visa, MasterCard, Bancontact or their current account with BOIP.
Owners will receive a confirmation by email once the payment has been processed. This confirmation contains a reference to the online Designs Register, where they can always find the most up-to-date information on their design registration. Renewal certificates will no longer be received by post.
Source: www.boip.int
Nov 22, 2016 (Newsletter Issue 21/16)Practice Notice on Geographical Marks ReleasedOn November 9, 2016, the Canadian Intellectual Property Office (CIPO) released a practice notice in order to clarify its interpretation of paragraph 12(1)(b) of the Canadian Trade-marks Act when applied for evaluating the registrability of trademarks with a geographical name.
CIPO’s notice states that, in accordance with the 2016 Federal Court of Appeal’s decision in MC Imports Inc. v. AFOD Ltd., a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name. Therefore, such trademark could not be registered in Canada.
Furthermore, a trademark will not be registrable under paragraph 12(1)(b) if it is deceptively misdescriptive.
Finally, if the registrar determines that the trademark is a geographic name, the applicant will have to confirm to the CIPO the actual place of origin of the associated goods or services. The notice also states that the address of an applicant is irrelevant when evaluating the place of origin of the associated goods or services.
Source: Joli-Coeur Lacasse Avocats, Canada
Nov 22, 2016 (Newsletter Issue 21/16)DIU to Local Office Required for IR Designating MZ The Office of Mozambique has informed WIPO that the holder of a mark must submit a further declaration of intention to use the mark directly to the Office of Mozambique by using the prescribed form in Portuguese and paying the required fee. Such declaration must be:
- submitted by the holder’s authorized representative, who must be domiciled in Mozambique;
- presented within five years from the date the Office of Mozambique is notified of the international registration or the subsequent designation.
For further information, please see here
Source: www.wipo.int Nov 09, 2016 (Newsletter Issue 20/16)
New Regulation on Certification Marks
On August 30, 2016, a new declaration on the Procedures for Registration and Protection of Certification Marks was enacted by the Ministry of Commerce. The declaration sets forth procedures and documents required for national and international registration, term of protection, invalidation, and cancelation.
In order to register, the applicant must have legal personality and competency for certifying the goods and/or services. The application form can be submitted to the Department of Intellectual Property of the Ministry of Commerce in the Cambodian or English language, using the prescribed form, along with a statutory declaration/affidavit, a certificate of competency, and regulations governing use of the certification mark.
The applicant can also claim the priority right of an earlier application filed by the applicant based on the Paris Convention. Further, a foreign applicant must be represented by a local trademark agent, accompanied by a registration certification or an application in the foreign applicant's home country, and an original notarized power of attorney. The official fees will be determined in a joint declaration between the Ministry of Commerce and the Ministry of Economy and Finance. Currently, the official fees for ordinary trademark registration shall apply.
The applicant has six months to respond to the Registrar if the application requirements are not fulfilled. As soon as it registered, the information of the certification mark and the regulations governing use will be published. Any interested person may submit a statement of opposition to the Registrar within 90 days from the post-registration publication date.
The registration is valid for ten years from the date of filing the application and may be renewed for consecutive periods of ten years. The owner must report the list of products and producers to the Department of Intellectual Property annually. The report and the relevant documents in other languages must be translated into the Cambodian language and certified by a Cambodian trademark agent or professional translator registered in Cambodia.
Failure to provide the annual report and the required documents to the Department of Intellectual Property within 90 days from the date of notification may result in cancelation of the registration.
Source: INTA Bulletin Vol. 71 No. 19 of Nov. 1, 2016
Contributor: Pheng Thea, Abacus IP, Phnom Penh, Cambodia and verifier: Ly Pharavy, Trademark Agent, Phnom Penh, Cambodia
Nov 09, 2016 (Newsletter Issue 20/16)
Refiling of Refused Trademarks Allowed
On September 2, 2016, the Industrial Property Institute (IPI) of Mozambique issued an official letter allowing applicants to refile trademark applications which were previously refused by the IPI. Until then it had been the practice of the Office to prohibit the refiling of such trade marks. This posed a serious obstacle to trade mark applicants who wished to refile their applications in Mozambique for strategic reasons.
The new Mozambique Industrial Property Code, published under Decree no. 47/2015, which came into force on March 31, 2016, contains no provisions prohibiting an applicant from filing an application for the registration of a trade mark that has been previously (and finally) refused by the IPI.
It is important to note that refiled applications will be subject to the same requirements and examination process as the former application.
Source: ENSafrica, South Africa
Nov 09, 2016 (Newsletter Issue 20/16)Comments on Proposed Rule Changes RequiredOn October 28, 2016, the U.S. Patent and Trademark Office published a Federal Register notice seeking written comments on proposed changes to the rules for revival of abandoned trademark applications, reinstatement of abandoned applications and cancelled or expired registrations, and other petitions to the Director. The Office proposed the changes "to provide more detailed procedures regarding the deadlines and requirements for petitions to revive an abandoned application" and to "codify USPTO practice regarding requests for reinstatement of applications that were abandoned, and registrations that were cancelled or expired, due to Office error".
The notice stated that these changes should help achieve the Office’s goal of promoting the integrity of the information in the trademark electronic records system by (1) providing an accurate reflection of the status of live applications and registrations, (2) clarifying the time periods in which applications or registrations can be revived or reinstated after abandonment or cancellation, (3) clarifying the deadline for requesting that the Director take action, and (4) facilitating the efficient and consistent handling of such requests.
Written comments must be received by December 27, 2016.
For more information, please see here
Source: www.ipo.org Nov 09, 2016 (Newsletter Issue 20/16)Official Fees AmendedOn October 26, 2016, amendments into the statute of patent and other official fees came into force in Kyrgyzstan. These amendments are associated with the approval on October 3, 2016, of the Decrees of the government of the Republic of Kyrgyzstan on Regulation on fees for registration of inventions, utility models, designs, selection achievements, trade and service marks, places of origin of goods as well as on Regulation on fees for registration of copyright objects, related rights and topologies of integral circuits.
The main change is a transfer of currency stipulated for official fees from the US Dollar to Kyrgyz Som due to the corresponding Resolution No. 135 of March 18, 2016, stipulating such requirements. Such transfer caused the change of amounts of almost all official fees. Some of the fees, such as official fees for filing patent, utility model and design applications, as well as the fees for requesting substantive examination for inventions and utility models together with maintenance fees for all objects have increased by 10%.
On the contrary, official fee for filing and examining a trademark application, requesting substantive examination for designs as well as grant fees for all for all objects have been decreased from 10% to 40%. There is also a change in the structure of patent fees, i.e. official fee stipulated for each dependent claim starting from the 11th has now been unified for each dependent claim above 11.
Further, the discount policy has also been subject to changes making less possibilities for the applicants to enjoy discounts on official fees. Specifically, the earlier stipulated discount on patent fees for applicants small entitles has been abolished. Moreover, earlier stipulated discount for applicant natural persons is now provided only if said applicants are inventors.
The official fee for filing a trademark application is now KGS 20,000 for one class and KGS 7,500 for each additional class. The official fee for registration, publication and issuing of certificate is now KGS 15,000 (same for black-and-white and colour trademarks).
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Nov 09, 2016 (Newsletter Issue 20/16)
Draft of New Trademark Law
A parliamentary committee of Indonesia's House of People's Representatives has reviewed and approved the draft of New Trademark Law. The New Trademark Law is expected to be enacted in November 2016.
The new regulations are highlighted as follows:
1. Mark shall mean a sign that is displayed graphically in the form of a picture, name, word, letters, figures, composition of colors, in the form of 2 (two) dimensional and/or 3 (three) dimensional, sound, hologram or a combination of said elements to distinguish goods and/or services produced by a person or legal entity in the activities of trade in goods or services.
2. Mark that are protected consist of a sign in the form of image, logo, name, word, letter, number, color composition, in the form of 2 (two) dimensional and / or 3 (three) dimensional, sound, hologram, or a combination of the two (2) or the more elements to distinguish the goods and/or services produced by the person or legal entity in the trading of goods and / or services.
In terms of mark such as the form of 3 (three) dimensional, the specimen of mark that is attached is in the form of the characteristics of the mark in the form of drawing/painting that can be seen from the front, side, top, and bottom.
In terms of mark such as voice, the specimen of mark that is attached should be a notation and sound recordings
3. The minimum requirements in filing of trademark application in order to be provided the filing date shall consist of :
a. Scanned copy of signed Power of Attorney and Statement on Ownership of the Mark
b. The complete name and address of applicant
c. Specimen of the mark (in JPG format)
d. Specification of goods/services that will be covered by the application
e. Class of good/services
Meanwhile, the original signed Power of Attorney and Statement on Ownership of the Mark may follow within 1 (one) month after the filing date. If the original document could not filed within said period, then the application will be deemed withdrawn.
4. The Official Publication in the Official Gazette shall be published for 2 (two) months and it shall be made at least 15 (fifteen) days after the filing date.
5. In terms of there is no any objection or opposition from the third party, the Trademark Office will examine the application 1 (one) month after the expiry date of publication and the examination shall be finished in the period of 5 (five) months at the latest.
6. The renewal application of trademark registration shall be filed within 6 (six) months before expiry date of trademark registration. The late filing of renewal application may be filed within 6 (six) months grace period after the expiry date of registration by paying a fine/penalty amount of USD 170.
The written Declaration of Use and the Power of Attorney have to be filed along with the renewal application and the Evidence of Use of Trademark is not required in filing of renewal application.
Requirements for filing the renewal application for trademark registration are as follows:
1. Scanned copy of certificate of registration (if any) or information on trademark registration number
2. Scanned copy of signed Power of Attorney and Statutory of Declaration duly signed by the proprietor of trademark registration. No need to be legalized/ notarized.
Source: Estumark LLP, Indonesia
Nov 09, 2016 (Newsletter Issue 20/16)
Amendments to IP Laws Drafted
The Kazakhstan’s Ministry of Justice has drafted a new law amending and supplementing a number of intellectual property laws and regulations to align Kazakhstan’s IP legislation with the Organization for Economic Cooperation and Development’s (OECD) standards in the area of IP protection and with the Singapore Treaty on the Law of Trademarks.
The Ministry of Justice has held public hearings on the draft law, which aims to introduce the following:
- A single-level system for the registration of IP rights, i.e. all registrations shall be handled by the National Institute of Intellectual Property (NIIP), as opposed to the current two-level system where both the NIIP and the department for IP-related rights within the Ministry of Justice are involved;
- An appeal board shall be created within the NIIP to handle potential appeals against NIIP’s decisions, instead of going directly to court;
- Stronger enforcement measures, including fair compensation to IP rights owners;
- Simplified recording of license, sublicense and assignment agreements – currently, four originals of the agreement are needed for the recordal, but according to the draft law, only a certified copy or extract of the agreement will be required;
- Harmonisation of the ‘exclusive license’ definition with that of the Singapore Treaty — according to current regulations, a licensor retains his right to use a patent, trademark, industrial design or plant variety even after transferring his license to a licensee. According to the draft law, this right will truly be exclusive to the license holder, that is, the licensor will lose his IP right once he transfers his license.
- Clarification of what is to be done with original goods found in the same shipment with counterfeit goods – they are to be transferred to the rights holder or to their representative, provided that their appearance or purpose have not been altered; and
- Clarification regarding proof of use of a trademark – the use of a registered trademark in a slightly different form that does not influence its distinctiveness should be considered as proper use and can not be the ground for cancellation.
Source: www.petosevic.com
Nov 09, 2016 (Newsletter Issue 20/16)Nice Classification Changes Soon AdoptedThe USPTO has issued a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The rule entitled "International Trademark Classification Changes" published in the Federal Register today (81 Fed. Reg. 76,867 (November 4, 2016)), and will become effective January 1, 2017.
Source: www.uspto.gov Nov 09, 2016 (Newsletter Issue 20/16)
Accession to WIPO Convention by the Cook Islands in Force
The Cook Islands has become a party to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).
The accession to WIPO is separate from the Cook Islands being party to these agreements. It is an encouraging step towards establishing a regulatory framework in line with international standards.
Source: www.wipo.int
Oct 26, 2016 (Newsletter Issue 19/16)
10th Edition of Nice Classification Soon Expected
The tenth edition of the Nice Classification is expected to enter into force on January 1, 2017, in Kuwait. The adoption of the 10th edition will not affect trademarks already filed and registered in Kuwait. Upon next renewal, goods and classes affected by this change in formalities should be reclassified accordingly by the Trademark Office.
It is important to note that regardless of which edition of the Nice Classification is being used, the trademark offices across the Gulf Cooperation Council, which Kuwait is a member of, will depart from the Nice Classification when dealing with items that contradict Sharia law. For example, trademarks covering alcoholic goods and related retail or wholesale services are prohibited.
Source: Saba & Co. IP – Head Office, Lebanon
Oct 26, 2016 (Newsletter Issue 19/16)Trademark Examination Guidelines in English Now AvailableThe Japan Patent Office (JPO) has published the "Examination Guidelines for Trademarks" in English for overseas users in order to standardize and uniform the examination of trademark applications.
The Office informs that some examples have been changed partly from the original Japanese version for a better understanding.
To access the Examination Guidelines for Trademarks, please click here
Source: www.jpo.go.jp Oct 26, 2016 (Newsletter Issue 19/16)Official Fees for Trademark Prosecution ChangedOn October 14, 2016, new official fees for trademark prosecution in Poland entered into force.
Relevant changes are:
- Payment for trademark filing is now calculated separately for each class of protection (previously it was calculated for three first classes).
- Each class costs the same, regardless of the number of classes to be filed.
- A new fee for opposition is introduced.
The new official fee for a paper trademark application is now PLN 450, for an electronic trademark application is now PLN 400 for one class and PLN 120 for each additional class in both aforementioned forms.
For more information, please see the article of our Country Index partner here
Source: Kulikowska & Kulikowski, Poland
Oct 26, 2016 (Newsletter Issue 19/16)TTAB Revisions to Rules of Practice ChangedOn October 7, 2016, the Trademark Trial and Appeal Board (TTAB or Board) of the U.S. Patent and Trademark Office (USPTO) published changes to its Rules of Practice.
The USPTO published a Notice of Proposed Rulemaking, suggesting extensive changes to the TTAB’s Rules of Practice on April 4, 2016. After undertaking numerous outreach efforts to effected members of the trademark bar and their clients, the TTAB published its package of the final Rules changes at 81 Fed. Reg. 69950. The revised rules take effect on January 14, 2017.
Some of the chief revisions to the Board’s Rules of Practice include:
1. All filings with the TTAB must be submitted electronically through its Electronic System for Trademark Trials and Appeals (ESTTA), unless excused via Petition to Director of the USPTO.
2. Instead of the Plaintiff, the TTAB will once again undertake the responsibility for service on the Defendant of the initial pleading in the proceedings (such as the Notice of Opposition or Petition for Cancellation), and service will be by e-mail.
3. Service of all papers (by the TTAB and by the parties on each other) must be by e-mail.
4. As is presently the limitation on interrogatories, requests for production and requests for admissions will be limited to 75 in number. One additional comprehensive admission request will be permitted for authentication of the adverse party’s produced documents. Parties may seek leave from the TTAB to exceed these limitations upon a showing of good cause.
5. Parties will have the right to submit trial testimony by declaration or affidavit. However, an adverse party shall have the right to take testimonial depositions to cross-examine each declarant/affiant.
6. The minimum character size for written submissions to the TTAB will increase from 11 point font to 12 point font.
7. All discovery must be completed during the discovery period. Therefore, discovery requests must be served sufficiently in advance of the discovery deadline so that the responses are due on or before the deadline.
8. The requirements for Notices of Reliance have been updated to reflect current TTAB practice (for example, printouts of Internet documents).
For further information, please click here
Source: Quarles & Brady LLP, USA Oct 26, 2016 (Newsletter Issue 19/16)Official Trademark Fee AdjustmentThe USPTO is amending its rules to set, increase or decrease certain trademark fees, effective January 14, 2017.
USPTO informs that the fee adjustments will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations. The rule will further USPTO strategic objectives by:
1.) better aligning fees with the full cost of relevant products and services;
2.) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials;
3.) promoting the efficiency of the process, in large part through lower-cost electronic filing options.
A notice has been issued of the final rulemaking entitled "Trademark Fee Adjustment" in the Federal Register, 81 Fed. Reg. 72694 on October 21, 2016.
For further information on the Trademark fee changes page, please click here
Source: www.uspto.gov Oct 12, 2016 (Newsletter Issue 18/16)
Administrative Instructions on Patent and TM Registration in Force
The Kosovo Ministry of Trade and Industry signed two more IP-related Administrative Instructions, which entered into force.
The first Administrative Instruction (AI) No. 13/2016, in force as of September 2, 2016, thoroughly describes the procedures such as the filing of a patent application, patent registration, publication and the recording of changes in the register.
The AI No. 14/2016, in force as of September 7, 2016, clarifies the procedures to be followed and documents to be submitted when taking actions such as filing requests to record changes or renew trademarks. It is important to note that the AI requires a Power of Attorney to be enclosed with each of these requests. The AI also introduces some new provisions, which were not covered by the previous by-law, e.g. provisions describing the procedure to be followed if an observation notice has been filed.
Source: www.petosevic.com
Oct 12, 2016 (Newsletter Issue 18/16)Trademark Registration Fees IncreasedThe Saudi Trademark Office has officially increased the fees of trademark registration. The GCC TM Law and its Implementing Regulations had been published at the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1st, 2016; pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014.
The new official fees as per below are applicable as of October 2, 2016:
Filing Fees USD 270/SAR 1,000
Publication Fees USD 800/SAR 3,000
Registration Fees USD 1,335/SAR 5,000
The official fees for filing and publication have remained unchanged whereas the registration fees have been increased from USD 800 to USD 1,335 USD.
It remains to be seen whether the fees increase will retroactively apply to the pending applications or if there are going to be changes concerning renewals, recordals. So far there has been no official notification in this regard yet.
Source: JAH & Co. IP, Qatar Oct 12, 2016 (Newsletter Issue 18/16)Major Changes to IP Laws in Cayman Islands SoonThree new intellectual property (IP) laws concerning trademarks, patents and designs were published in the Cayman Islands on August 31, 2016. These laws will come into force on a date to be announced. They will have a significant impact, especially on trademark and design protection. The laws are:
- The Trade Marks Bill 2016
- The Design Rights Registration Law 2016
- The Patents and Trade Marks (Amendment) Bill 2016
Presently, the only way of getting IP protection in the Cayman Islands is through the extension of UK registrations, and there is only provision for patent and trademark rights. The new laws will:
- Create a system of direct trademark registration in the Cayman Islands
- Create a system for the extension of UK design registrations
- Bring about some minor amendments to the existing system of extending UK patents
The bill on trademarks creates an independent trade mark registration system. Other interesting features of the bill are:
- There is a requirement that a proprietor must appoint an agent;
- The term ‘trade mark’ is defined in fairly broad terms to include words, designs, numerals, letters and shapes of goods or their packaging;
- There is provision for the registration of ordinary trademarks, as well as certification marks and collective marks;
- There are absolute and relative grounds of refusal;
- The registration and renewal terms are 10 years;
- An annual maintenance fee is payable;
- There are various offences relating to trademark infringement, and these carry hefty fines and prison terms;
- There are specific provisions regarding counterfeiting - for example, the registered proprietor can give notice to the Collector of Customs of suspected infringing goods that are expected to arrive in the Cayman Islands and, provided that the proprietor furnishes the necessary fees and security, the officials will impound the goods and the goods will be forfeited;
- Regulations can be passed and these can relate to the continued application of the Patents and Trade Marks Law of 2011 - presumably the Regulations will explain how existing registrations (UK extensions) will be treated.
For more information, please click here
Source: Spoor & Fisher, South Africa/Channel Islands
Oct 12, 2016 (Newsletter Issue 18/16)
Accession to Madrid System
On October 6, 2016, Brunei Darussalam deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol for the International Registration of Marks.
Its accession makes Brunei the 98th member of the Madrid System. The Protocol will enter into force with respect to Brunei Darussalam on January 6, 2017.
From early next year, local brand owners in Brunei Darussalam can begin using the Madrid System to protect their marks in the 114 territories of its 98 members, by filing a single international application in one language and paying one set of fees in a single currency.
Source: www.wipo.int
Oct 12, 2016 (Newsletter Issue 18/16)Administrative Cancellation Proceedings Soon in ForceAs of January 1, 2017, an administrative non-use cancellation proceeding before the Federal Institute of Intellectual Property (the Swiss Trademark Office) will be available in Switzerland.
This proceeding will be more quick and cost effective than the current proceeding. It may be filed by anyone, no specific legal interest in the cancellation is required. The proceeding is initiated by a request to the Swiss Trademark Office. A request for partial cancellation with regard to certain goods and/or services is possible. The application must include prima facie evidence for the non-use of the contested mark. It has been reported by the Office that an in-use search report from a specialized provider is sufficient.
For more information, please see the article of our Country Index partner here
Source: Isler & Pedrazzini AG, Switzerland Oct 12, 2016 (Newsletter Issue 18/16)Opposition Procedure Against IR in ForceThe Mexican Institute of Industrial Property (IMPI) informed WIPO that the new opposition procedure, which entered into force on August 30, 2016, also applies to international registrations designating this country and subsequent designations of Mexico notified to IMPI as from that date.
IMPI will republish the international registrations and subsequent designations under the respective national filing numbers in its online Industrial Property Gazette within a maximum period of 10 working days upon receipt of such notification. The opposition must be filed to IMPI directly within a non-extendable period of one month, drafted in Spanish and subject to payment of a fee.
Within a maxiumum period of 10 working days after expiry of this deadline, IMPI will publish a list of opposed marks. Documents relating to the opposition will be available online at the IMPI records consultation service. Holders of opposed international registrations or their local representatives may respond to the opposition within a non-extendable period of one month thereafter. The response must be drafted in Spanish, filed directly with IMPI and bear an address in Mexico for the purpose of receiving notifications. Failure to respond is not construed by IMPI as tacit acceptance of the claims made by the opposing party. The opposition does not suspend the IMPI procedure for determining whether it should grant protection or prolong the time limit for reaching that decision.
Upon expiry of the opposition period and of the response period, where appropriate, IMPI will conduct the substantive examination, during which it may consider the claims made by the opposing party and the holder during the opposition proceedings, as well as any other material deemed relevant to the examination.
Upon completion of the substantive examination, IMPI will send a statement of grant of protection or an ex officio notification of provisional refusal, as appropriate, to WIPO, and also communicate its decision to the opposing party. WIPO will transmit a copy of the notification or statement to the holder of the international registration.
For further information, please check here
Source: www.wipo.int Sep 28, 2016 (Newsletter Issue 17/16)No Registrations of Trade Names AnymoreThe Law of the Kyrgyz Republic № 133 dated July 23, 2016 "On Amendments to Certain Legislative Acts of the Kyrgyz Republic” entered into force on August 21, 2016 and invalidated the Law of the Kyrgyz Republic "On Trade names". With regards to said Law the Kyrgyz Patent Office stops accepting applications for the registration of trade names.
Exclusive rights to trade names registered in the authorized state body in the field of intellectual property before the entry into force of this Act, including those registered by a license agreement shall be considered valid until the termination of the legal entity or a change in its trade name.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Sep 28, 2016 (Newsletter Issue 17/16)State Intellectual Property Service No Longer Needed The resolution "On optimization of central executive bodies of the state system for the legal protection of intellectual property" was adopted by the Cabinet of Ministers of Ukraine on August 23, 2016. It stipulates in particular the liquidation of the State Intellectual Property Service.
The State Intellectual Property Service had been responsible for the following functions: examination of applications for intellectual property rights; the issuance of the relevant patents and certificates; the registration of intellectual property objects; assignment agreements; license agreements and maintenance of the registers.
In future these functions will be delegated to the Ministry of Economic Development and Trade after the adoption of the relevant act by the Government.
The decision was taken in order to facilitate the streamlining of the state management in the intellectual property sphere, and to implement an effective management on behalf of the public enterprises and organizations in the intellectual property field.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Sep 28, 2016 (Newsletter Issue 17/16)Reformation of Judicial System LaunchedOn June 2016, the Ukraine launched the reformation of the Ukrainian judicial system. Three laws have already been adopted. They aim to correct deficiencies of the former judicial system, enhance the effectiveness thereof and thus raise its standards.
The new law on the judicial system introduces the Highest Court of Intellectual Property as a court of first instance. Intellectual property disputes can be reviewed further by the Supreme Court. The new procedure will facilitate the more expeditious processing of claims and reduce the backlog of cases. According to the new law, only lawyers, who are accredited with the bar are allowed to represent their clients before the Highest Court of Intellectual Property, while the earlier practice enabled all patent attorneys and legal counsels to represent their clients in intellectual property matters before the court. This amendment will come into force on January 1, 2019.
The reform will also affect the enforcement procedure: private enforcement officials are expected to be introduced. The new body will execute court decisions and will give right holders the opportunity to control the execution of the enforcement actions.
The above-mentioned changes are intended to facilitate the implementation of full-scale judicial reform in Ukraine in accordance with public expectations and in line with European standards.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Sep 28, 2016 (Newsletter Issue 17/16)
New Value Added Tax Adopted
The Egyptian parliament approved on August 28, 2016, the long-delayed value added tax (VAT) which replaces the former General Sales Tax (GST) system.
On September 5, 2016, VAT Law No. 67 of 2016 was issued. It replaces the Sales Tax Law No. 11 of 1991 and it’s amendments. The effective date of the VAT is September 8, 2016, the date after the law was published in the official gazette. The new tax law is part of an economic reform programme package aimed at reducing the country's budget deficit.
In principle, VAT applies to all provisions of goods and services, other than some goods and services that are listed in an exemption table.
The VAT tax rates are as follows:
- A 13% standard rate applies to most supplies of goods or services. This rate will increase to 14% on July 1, 2017.
-A schedule to the VAT Act lists goods and services that are subject to special rates in addition to the standard rate.
-A schedule to the VAT Act also lists goods and services that are subject only to special rates.
Source: BDO Egypt (www.bdo.com.eg) and PricewaterhouseCoopers Middle East (www.pwc.com)
Sep 28, 2016 (Newsletter Issue 17/16)
Expansion of Online Payments Facility
The Irish Patents Office announced the expansion of their online payments facility. This new development will facilitate the online payment of all national Trade Mark and Design fee types together with the filing of related documents.
The previous fee payment functionality was confined to online payment of renewal, grant and registration fees. The new online facility expands the range of fee types that can be paid online to include all national Trade Mark and Design fee types. In addition, all documentation associated with a particular fee type can be submitted via this new development.
Source: www.patentsoffice.ie
Sep 28, 2016 (Newsletter Issue 17/16)Filing of International Trademark Applications by EmailThe UK Intellectual Property Office (UKIPO) announced that it is now possible to file international trademark applications electronically as from September 26, 2016, by using the following email address Internationaltrademarks@ipo.gov.uk
The Office encourages applicants to use the UKIPO version of the MM2. The MM17/MM18 will be accepted if filed with the MM2. No other forms or correspondence should be emailed to the above mentioned address.
An updated version of the UKIPO’s form MM2 'Application to register an International trade mark' is available here
Source: www.gov.uk Sep 28, 2016 (Newsletter Issue 17/16)Fees for Designs Reduced SoonThe UK Intellectual Property Office (UKIPO) has changed fees for UK registered design protection. The new fees will come into force on October 1, 2016.
The fee reductions will be substantial. Filing fees will be based on the number of applications filed; the more applications, the greater the saving. For example, the fee for filing one design application will be reduced from £60 to £50 when filed electronically which is not a great saving. However, applicants can now for the first time file up to ten designs for a single fee of £70 (currently £420) and up to 20 designs for a single fee of £90 (currently £820).
Renewal fees will increase every five years of the term of protection but, overall, will also be reduced, with the biggest savings made in the third and final renewal periods. For example, the renewal fee payable at the end of year 15 will be £110 compared with the current £310 (a 64% reduction). At year 20, the fee will be £140 instead of the current £450 (a 69% saving). Overall, the total renewal fees for a full 25 year term will be reduced by 63% from £1,100 to £410.
For further information, please check here
Source: www.gov.uk and Squire Patton Boggs (UK) LLP, UK Sep 13, 2016 (Newsletter Issue 16/16)Automated Issuance of Trademark Registration CertificatesThe Indian Trade Marks Registry announced in a notice that it implements an automated process for generation and issuance of trademark registration certificates.
Accordingly, from August 1, 2016, the registration certificates will be generated through an automated system in accordance with the relevant provisions of the Trade Marks Act & Rules and made available to the applicants concerned or their authorised agents on record, in respect of all trademark applications:
- which have been published in the Trade Marks Journal Number 1720 dated November 23, 2015, and thereafter,
- where no request for amendment filed on behalf of the applicant is pending for disposal,
- where the copy of original application for registration is available in the Trade Marks Registry’s electronic database,
- where no requirement (like fee, Power of Attorney, etc.) is pending for compliance on part of the applicant , and
- which have not been specifically prohibited for registration by the order of any court, IPAB or any competent authority.
The Registration certificate will be transmitted to the applicant concerned or his authorised agent on record on his email and shall also be made available on the official website www.ipindia.nic.in along with status of the application concerned.
Cases which are left out by the automated registration process due to aforesaid reasons will be processed as per law by the Registration wing of the Examination Publication and Registration Section of the TMR Mumbai through the present Trade Marks System on case to case basis.
Source: www.ipindia.nic.in Sep 13, 2016 (Newsletter Issue 16/16)Major Procedural and Fee Changes ExpectedThere are major procedural and fee changes in Saudi Arabia expected. The GCC TM Law and its Implementing Regulations had been published in the Official Gazette in Saudi Arabia (Um Al- Qura), issue No. 4625, on July 1, 2016. Pursuant to the Saudi Royal Degree No. M/51 dated April 26, 2014, the GCC TM Law shall come into force in Saudi Arabia within 90 days from the publication of the Implementing Regulations of the GCC TM Law (September 27, 2016).
Following is the verbal information provided by the Saudi Trademark Office:
1. Possible hike in official trademark registration fees from USD 1,870 to USD 2,400.
2. The opposition period will be shortened from the current 90 days to 60 days for all new applications filed on or after the implementation of Law.
3. The oppositions are to be filed with the Higher Committee of the Trademark Office, swapping the current practice of filing opposition with the court.
4. There would be official fees for appeals to Minister & Oppositions.
5. Similar to the implementation of GCC Trademarks Law in other gulf states it is expected that the increased fees would be applied retroactively for pending applications in terms of publication and registration.
Source: JAH & Co. IP, Qatar Sep 13, 2016 (Newsletter Issue 16/16)New IP Protection e-Service ImplementedThe Dubai Department of Economic Development (DED) launched a new electronic system for recording trademarks and processing complaints against importers and distributors of suspected counterfeits.
The updated e-service replaces the previous procedure that required complaints to be submitted in person, which is expected to minimize paper work and facilitate processing of complaints and notifications relating to proactive inspections conducted by the DED. The portal is accessible via the website www.consumerrights.ae.
Source: www.sabaip.com Sep 13, 2016 (Newsletter Issue 16/16)
Administrative Instructions Changed
Four new IP-related administrative instructions have recently entered into force in Kosovo.
The Administrative Instruction (AI) No. 08/2016, effective as of July 4, 2016, relates to the accelerated examination of trademark applications, which is still available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:
- Copy of the trademark application as filed;
- Arguments proving the alleged trademark infringement; and
- Proof of payment of the official fee per trademark in the amount of EUR 120.
Previously, the applicant also had to submit the proof that a civil or a customs action had been initiated.
The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IP Agency will decide on the request within 15 days from the filing date of the request.
The second Administrative Instructions, No. 10/2016, effective as of August 2, 2016, introduces a single fee system and amends certain official fees.
Previously, the Kosovo IPO provided two different schedules of fees, one for legal entities and one for natural persons. The new AI provides for a single fee schedule for both categories of applicants.
Certain official fees have increased significantly. For instance, the fee for filing oppositions has doubled, from EUR 50 to EUR 100, while the fee for invalidation actions increased from EUR 50 to EUR 200.
The third Administrative Instructions, No. 11/2016, effective as of August 12, 2016, was approved following the entry into force of the new law on geographical indications and designations of origin, in January 2016.
Finally, the fourth Administrative Instructions, No. 12/2016, on the industrial design registration procedure entered into force on August 22, 2016, providing detailed information on the procedures prescribed by the new law on industrial design, in force as of January 2016.
These two Administrative Instructions thoroughly describe the procedures such as application, registration, publication, recordal of changes, renewal and termination of validity for GI(s) and industrial designs.
The new Administrative Instructions on trademark and patent registration procedures are expected to enter into force soon.
Source: www.petosevic.com
Sep 13, 2016 (Newsletter Issue 16/16)
New Domain Name Registration System
On July 26, 2016, Serbian National Internet Domain Registry (RNIDS) started implementing a new domain name registration system affecting all registrants of Serbian top-level domains, the Latin .rs and Cyrillic .срб (srb).
The new system is in line with the protocol used for registering and verifying generic domains (.com, .net and others).
New regulations compliant with the new system entered into force on the same day, July 26, 2016. Under the new rules, registrants are required to verify the email address that they use to register domains, which means that shortly after registering a new domain, a registrant will receive an email with instructions on how to confirm that the email address and other data provided are valid. The verification must happen within 20 days or the domain name will be deactivated.
Under the new rules, email addresses of the registrant and the administrative contact are the required identifying information, which the registrants have to maintain in an active state and keep updated throughout the domain name validity period. Registrants are required to notify their accredited registrars of any changes in contact information.
These newly introduced changes also affect domain name transfers and updates. To transfer domain names to another registrar, registrants will need to retrieve an authorization code and complete the transfer through their accredited registrars. The ownership change documents will be generated by the system and automatically sent to the current registrant’s email address.
Source: www.petosevic.com
Sep 13, 2016 (Newsletter Issue 16/16)
Guidelines of Design Registration Implemented by DPMA
Within the framework of the Convergence Programme of the EUIPO and national offices for a common practice, a project was launched to develop guidelines for the requirements for graphic representation of designs, which were published in a Common Communication of April 15, 2016.
The scope of this project included the development of a common practice and common guidelines for the requirements in the application procedure concerning the graphic representation of designs.
Focus was on the disclaimers as well as the acceptable types of views and rules to assess if a background is neutral.
The guidelines of the Communication has been implemented by the German Patent and Trade Mark Office in the design registration procedure from July 15, 2016.
Please refer to the (3,37 MB) Common Communication for contents and results of the project.
Source: www.dpma.de
Sep 13, 2016 (Newsletter Issue 16/16)
Accession to WIPO Convention by the Cook Islands
WIPO notifies the deposit by the Government of the Cook Islands, on July 27, 2016, of its instrument of accession to the Convention Establishing the Word Intellectual Property Organization (WIPO), signed at Stockholm in 1967.
The said Convention will enter into force, with respect to the Cook Islands, on October 27, 2016.
Source: www.wipo.int
Sep 13, 2016 (Newsletter Issue 16/16)
First Sound Trademark Registered
In China the first sound trademark was registered on May 14, 2016, in class 35, 38, 41 and 42 under No. 14503615, by China Radio International.
A sound mark can acquire distinctiveness only through long-term use. In the examination process, the Trademark Office can issue office action requesting the applicant to submit evidence of use and explain how the trademark acquired distinctness.
In order to effectively protect the trademark rights and prevent the difficulty of proof when others apply to cancel the trademark due to non-use of three consecutive years, the trademark owner should pay attention to keeping evidence of use during daily operation. For example, if the trademark is used in a television advertisement, the contract and invoice for producing and publishing, the evidence of broadcasting shall be kept. If the trademark is used in an online medium, the use evidences is advised to be notarized.
Source: DEQI Intellectual Property Law Corporation, China
Sep 13, 2016 (Newsletter Issue 16/16)Electronic Mailbox System for Notifications The Turkish Patent Institute (“TPI”) has launched an optional electronic mailbox system for Trademark and Patent Attorneys to receive notifications. From August 17, 2016, attorneys can log into the mailbox system using e-signatures and electronically sign an undertaking on their first login.
For notifications uploaded to the mailbox system, the receipt date is either:
- The date an Attorney logs into their mailbox, if the login is within ten days of the TPI uploading the notification.
- The tenth day after the TPI uploads the notification, if an Attorney fails to log into their mailbox within this period.
To ensure the system’s reliability and to avoid any possible loss of rights, Attorneys will receive a daily email to their regular email address, containing a list of notifications available in their TPI mailbox.
The TPI mailbox system is optional at this stage and only available to Trademark and Patent Attorneys. Legal entities and natural persons acting on their own behalf will continue to receive their notifications via post and registered e-mail system.
TPI’s announcement can be seen here (only available in Turkish).
Source: Moroğlu Arseven,Turkey
Aug 30, 2016 (Newsletter Issue 15/16)
Official Fees Increased
IP Australia has been changed its official fees.
As of October 10, 2016 the official trademark application fee for online filing will be AUD 250 per class with pick list and AUD 330 per class without pick list. There will be no registration fee anymore. The increase of trademark application fees per class intends to partially offset the removal of the AUD 300 registration fee.
Source: www.ipaustralia.gov.au
Aug 30, 2016 (Newsletter Issue 15/16)Major Amendments to Trademark ActThe National Assembly has approved a major amendment to the Korean Trademark Act ("Act"), which will go into effect on September 1, 2016. This is the first comprehensive amendment to the Act in 26 years.
Important changes have been highlighted below:
- Legal standing no longer required to file non-use cancellation actions
- Delayed evaluation of similarity to senior marks
- Elimination of one year bar against registering marks similar to expunged marks
- Expanded restrictions against applications filed by agents
- Limitations on trademark rights clarified
- "Electronic use" of trademarks acknowledged as one of the recognised types of use.
- Confirmation of scope trials can be filed for a subset of designated goods
- Broader grounds for rejection of certification marks
For further information, please see the article of the law firm Kim & Chang here
Source: Kim & Chang, South Korea Aug 30, 2016 (Newsletter Issue 15/16)
TIPO’s Names and Search Reference Revised
Taiwan Trademark Office announced that there have been changes made in the names and search reference for designated use of goods and services in applications for trademark registration. A total of 64 revisions, 6 deletions, and 17 additional revisions to names or notes on groupings were made. This was done to stay current with the Nice Classification (NSL 10-2016). These changes took effect on July 1, 2016.
The e-filing system were simultaneously updated. TIPO advises e-filers to download the changes to avoid inconsistency.
Source: www.tipo.gov.tw
Aug 30, 2016 (Newsletter Issue 15/16)
Amendments to Trademark Act Now Effective
The amendments to Thailand’s Trademark Act have become effective on July 28, 2016. They introduce a number of changes that will set the stage for Thailand to accede to the Madrid Protocol in 2016 which we have already reported.
The changes also reduce the opposition period from 90 days to 60 days from the publication date of the application.
Also, the new official fee for filing a trademark application is now THB 1,000 per one item of up to five items, and from the 6th item THB 9,000 per class. The official registration fee is now THB 600 per item of up to five items, and from the 6th item THB 5,400 per class. There is no publication fee.
For further information on additional amendments, please check the previous news of July 25, 2016 on Country Index.
Source: www.kass.com.my
Aug 30, 2016 (Newsletter Issue 15/16)
Official Fees Increased
The Argentine Patent and Trademark Office has increased the official fees. It is a gradual two-step approach. The first increase became effective on August 18, 2016, while a second increase is scheduled to become effective on October 1, 2016.
The new official trademark filing fee is ARS 1,000 per class. There are no special fees for additional classes. The publication fee is already included in the filing fee as long as the trademarks are not larger than 6 cm x 6 cm.
As of October 1, 2016, the official trademark filing fee will be ARS 1,200 per class.
Source: Marval O'Farrell & Mairal, Argentina
Aug 30, 2016 (Newsletter Issue 15/16)
Opposition System Now Available
A new opposition system has been implemented in Mexico as of August 30, 2016.
The Mexican Institute of Industrial Property (IMPI) needs to publish the trademark application in the Industrial Property Gazette within 10 business days from the filing date. The applications will be subjected to formal examination.
Third parties can file an opposition within one month of the date of its publication in the Gazette. An extension of this opposition period is not allowed. After that a list of those applications that were opposed will be published in the Gazette within the following 10 business days.
The following needs to be noted:
- The opposition will not result in a suspension of the registration process.
- Opposing an application does not grant the opposing party a status as an interested third party.
- The opposition shall not automatically determine the outcome of the in-depth examination carried out by the MTO.
- The MTO may consider in its analysis the opposition and statements made in response by the applicant.
With the new system third parties receive the possibilities to file information, evidence, and documentation regarding their respective marks that will allow IMPI to better assess the registrability of a distinctive element in a new application.
Source: Hogan Lovells, Mexico and Bufete Soni, Mexico
Jul 25, 2016 (Newsletter Issue 14/16)
Preemptive Trademarks Are Not Abandoned
On May 17, 2016, the Japan Patent Office (JPO) made an announcement regarding preemptive trademark applications.
In recent years, some individuals and companies have filed a large number of "preemptive trademark applications", for example, well-known phrases of other persons. According to the JPO, most of such trademark applications are flawed applications for which no payment of the fee is made, and thus will be dismissed. However, the Trademark Act and the Trademark Law Treaty, to which Japan acceded, provide that a filing date is admitted even if no payment of the fee is made. Furthermore, a process for dismissal of the application requires a certain time period. Thus, if a trademark search is conducted before the process is completed, the trademark that has preemptively been applied for is shown as a search result.
The JPO advises not to abandon filing a trademark application in the above case, stating that even if a payment of the fee is made, a trademark is not registered in a case where:
1. A trademark filed for registration is not to be used for goods or services pertaining to a business of the applicant; or
2. A trademark application is, for example, a preemptive application for registering another person's well-known trademark.
Source: www.harakenzo.com
Jul 25, 2016 (Newsletter Issue 14/16)Trademark Act Amendments Soon in ForceThe amendments to Thailand’s Trademark Act will become effective on July 28, 2016. The amendments will introduce a number of changes that will set the stage for Thailand to accede to the Madrid Protocol in 2016.
The Department of Intellectual Property is currently preparing a draft Ministerial Regulation that will allow Thailand to become a member of the Madrid Protocol, and it is preparing a new team of Trademark Registrars with responsibilities to: (1) take charge of filing International Applications at WIPO; and (2) accept and handle examinations of international registrations designating Thailand from WIPO.
Significant amendments to Thailand’s Trademark Act are listed below:
- Sound marks will be registrable.
- The criteria that constitute distinctiveness for different types of marks are now clearly stated in Section 7(2).
- Multiple-class applications will be allowed.
- Oppositions and responses to official actions will be reduced from 90 days to 60 days.
- Partial assignment for some or all registered goods or services will be allowed.
- The requirement to register associated marks will be abolished.
- A license agreement will not be terminated as a result of the transfer or inheritance of the right of the mark for which the license agreement is made unless there is a provision in the agreement to the contrary.
- Grace period for renewal will be introduced.
- The government fees for certain transactions have been revised including the trademark application fee.
- The offense of refilling has been added to Section 109/1 of the amended Trademark Act.
For more information, please see the article of Tilleke & Gibbins here
Source: Tilleke & Gibbins, LawPlus Ltd. and Spruson & Ferguson, Thailand Jul 25, 2016 (Newsletter Issue 14/16)Final Opportunity Before Abandoning TM ApplicationsThe Indian Trademarks Registry had dispatched a total of 13,062 examination reports containing objections under sections 9 (Absolute Grounds for Refusal of Registration), 11 (Relative Grounds for Refusal of Registration) and other relevant sections of the Trademarks Act, 1999 during the month of March and April 2016.
On July 11, 2016, the Office informed that it has received only 3,484 replies. Although, the prescribed time to reply the examination reports of the remaining 9,578 applications has been lapsed, the Office has extended that time up to July 31, 2016. If no reply is received on or before July 31, 2016, the application would be deemed as abandoned. The Office offers applicants and authorised agents that they can send a scanned copy of reply to the examination report to the email address parm.tmr@nic.in
A list of concerned applications can be seen in the Trade Mark Journal No. 1753 dated July 11, 2016 from pages 7,100 to 7,276 or here
For more information on the notice, please click here
Source: S. S. Rana & Co., India Jul 25, 2016 (Newsletter Issue 14/16)
Official Fees Slightly Increased
The Intellectual Property Office of Portugal has announced new official fees which are effective from July 1, 2016. The official fee for filing a trademark application is now EUR 123.76 and EUR 31,37 for each additional class.
Source: www.marqesmarcas.com
Jul 25, 2016 (Newsletter Issue 14/16)
Pledge Applications Received by Local AICs
The State Administrations of Industry and Commerce (SAIC) made an announcement that, after July 1, 2016, 25 local Administrations of Industry and Commerce (AICs) may receive pledge applications of trademark rights on behalf of China Trademark Office. Applications filed through the local AICs are free of charge.
According to the announcement, the local AICs may receive the application documents, prepare a list of applications, forward the application documents to China Trademark Office for examination, and deliver the pledge registration certificates to applicants. The 25 local AICs who are authorized to receive pledge applications include AICs in Zhejiang, Anhui, Guangdong, Guizhou, Shaanxi, Gansu, Xinjiang, Heilongjiang, Liaoning, Hebei, Shanxi, Neimenggu, Jilin, Shanghai, Fujian, Jiangxi, Shandong, Henan, Hubei, Hunan, Guangxi, Chongqing, Sichuan and Yunnan provinces. This new measure is aimed to further streamline administration, delegate power to lower levels, and bring convenience to the applicants.
It may be important to check whether the trademarks have been pledged when acquiring/assigning trademarks in China.
Source: www.lexfieldlaw.com
Jul 25, 2016 (Newsletter Issue 14/16)Official Fees of PoA/Legalized Document Increased The official fees of local attestation of powers of attorney or any other legalized document to be used for IP matters in Iraq & Kurdistan have increased.
The local legalization of the power of attorney or any other official document must be done by the following authorities in order to be acceptable by the Registrars of Iraq & Kurdistan: General Commission for Taxes at Ministry of Justice, Legalization Directorate at the Ministry of Foreign Affairs and Central Bank
Source: JAH & Co. IP, Qatar Jul 12, 2016 (Newsletter Issue 13/16)
Documentary Requirements for Trademark Application Changed
The Myanmar Registration Office has recently implemented amendments to the documentary requirements regarding applications for trade mark registration and maintenance. The changes came into effect as of June 1, 2016.
In particular, under the new regulation, in order for an application to be accepted by the Registration Office, any applicable Power of Attorney or Declaration of Ownership / Renewal / Change of Ownership form submitted must be notarized, authenticated and legalized up to the Myanmar Embassy/Consulate in the country where the applicant company is incorporated, or (in the absence of such embassy/consulate) the nearest Myanmar Embassy/Consulate. Previously, this requirement only applied to the Power of Attorney document, whilst the Declaration documents only needed to be simply signed.
The Registration Office is enforcing the new regulation strictly, with no grace period or exception made to comply. Unfortunately, this means that prospective applicants who have already executed documentation based on the old requirements will have to wait until they perfect the execution accordingly, before the Registration Office will accept their applications.
Source: www.ellacheong.asia
Jul 12, 2016 (Newsletter Issue 13/16)
Registered Trademarks May Block Company Registrations
The Registrar of Companies in Kenya is now required to consider trademark registrations when assessing company names. The Registrar is required to refuse a company name if the name is ‘offensive’ or ‘undesirable’. A company name will be deemed to be offensive or undesirable if it includes the name of a registered trademark. A written consent from the trademark owner will overcome the problem.
This change of practice is a result of the promulgation of the Companies Act 2015, and the Companies (General) Regulations 2015. There is no provision for the removal of names registered in violation of this requirement. It is also important to note that the situation does not apply in reverse - the Registrar of Trade Marks does not need to consider company names when assessing trade mark applications.
Companies might want to consider filing trade mark applications for their company names. It is, however, worth bearing in mind that a trade mark application does require a genuine intention to use.
Source: Spoor & Fisher, South Africa
Jul 12, 2016 (Newsletter Issue 13/16)All EU Laws Fully in ForceEUIPO informs that the United Kingdom remains a member of the European Union, with all the rights and obligations that derive from this. According to the Treaties which the United Kingdom has ratified, EU law continues to apply to the full to and in the United Kingdom until it is no longer a member.
Unless and until the process in article 50 of the Lisbon Treaty is triggered by the United Kingdom, the formal process for the United Kingdom to exit the EU will not commence. The negotiations once article 50 has been triggered will last up to two years, longer if agreed by the consent of all member states.
To access the statement, please click here
Source: www.euipo.europa.eu Jul 12, 2016 (Newsletter Issue 13/16)Trade Name Regulations ChangedPursuant to Ministerial Decision no. 124/2016, the Ministry of Commerce and Industry (MCI) in Oman has now the authority to cancel or ask the applicant to alter the registration of any trade name if it is similar to a registered trademark or any component of the trademark, or if it is similar to another trade name recognised nationally or internationally. Furthermore, complaints against parties with trade names that infringe trademarks may now be filed at the said Ministry.
Source: JAH & Co. IP, Qatar Jul 12, 2016 (Newsletter Issue 13/16)Suggested Procedure on Single Class ApplicationsThe General Director of Central Business Registry & Intellectual Property sent an official suggestion letter to the Ministry of Commerce and Industries which includes the following:
- Each trademark in each class should be registered via a standalone application and multiple class applications will not be accepted.
- Registration fee, application fee and classification fee should be deposited by the applicant at the time of filing the application in a single payment.
- Validity of distributorship certificates should not exceed from one year, in case, if the validity of distribution contract is for more than one year then the distributorship certificate should be renewed after one year following the registration date.
- The handwriting system should be changed to a modern and computerized system.
Further, the Office informed verbally that renewal and recordals of the trademarks which have been registered via multiple class applications will be renewed and recorded via multiple class applications. Also, pending applications will follow the old system.
Source: JAH & Co. IP, Qatar Jul 12, 2016 (Newsletter Issue 13/16)
New Defense Mechanism Against Online Trademark Infringement
Trademark owners have a new defense mechanism available in the fight against online infringement and counterfeiting in Nigeria. The Cybercrime (Prohibition, Prevention ETC) Act, 2015 deals with a whole range of cyber issues such as computer fraud and cyber- terrorism, as well as trade mark matters.
Section 25, which is entitled ‘Cybersquatting’, makes it an offence to use ‘on the internet or any other computer network’ any ‘name, business name, trademark, domain name or other word or phrase’ that is ‘registered, owned or in use by’ another party, in cases where that use was unauthorised, intentional and ‘for the purpose of interfering with’ the lawful use. A conviction can lead to imprisonment of up to two years and a fine of up to Naira 5,000,000 (approximately USD 25,000), or both. Interestingly, the court can also order the offender to ‘relinquish’ the trade mark or name to the ‘rightful owner’.
What this means is that owners of registered and other trademarks or names can now lodge criminal complaints against online infringers, and possibly even have registrations transferred to them. The benefit of criminal proceedings, of course, is that the trademark owner does not incur legal costs. It needs to be seen whether the Nigerian authorities are willing and able to prosecute offences of this nature.
Source: Spoor & Fisher, South Africa
Jul 12, 2016 (Newsletter Issue 13/16)Amendments to Trademark Regulation in ForceThe German Patent and Trade Mark Office (DPMA) announced that amendments to the trademark regulation (Markenverordnung) came into force on June 24, 2016.
Main changes are the following:
- Coloured trademarks and black and white trademarks need to be submitted in the way they are intended to be registered. It is no longer possible to request a black and white trademark registration when a coloured trademark has been submitted.
- Colour trademarks are now recognised as its own trademark type and covered by its own paragraph.
- For trademarks including non-Latin characters, a translation, transliteration and transcription needs to be submitted with the trademark representation.
For more information, please click on the DPMA news and the trademark regulation (only in German available )
Source: www.dpma.de Jul 12, 2016 (Newsletter Issue 13/16)Deposit Accounts and Electronic Funds Transfer Accounts Need to Be MovedThe Financial Manager is the USPTO’s new online fee payment management tool. USPTO informs that the deadline to move existing USPTO deposit accounts and electronic funds transfer (EFT) accounts to Financial Manager has been extended through July 2016. A new date will be announced later, and by that deadline all deposit accounts and EFT accounts must be stored in Financial Manager in order to be used for payments.
Customers may continue to pay as a guest (i.e. without logging in and using a payment method stored in Financial Manager), but will be limited to using only a credit/debit card. For an easy move, please click on the 'Financial Manager Quick Start Guide' here
Source: www.uspto.gov Jun 28, 2016 (Newsletter Issue 12/16)
Original or Notarized PoA Required
As of June 8, 2016, the Kosovo IPO does not accept any action if not accompanied by an original Power of Attorney (PoA) form. Alternatively, a notarized copy of the original is acceptable. Kosovo notary public will only certify a copy if the original is notarized in the country of origin. Therefore, we recommend that each PoA sent, as of now on, is notarized.
This change applies to all filings before the Kosovo IPO, such as new applications, renewals, responses to office actions, oppositions, recordals, or any other action before the IPO.
Therefore, scanned copies of PoAs will not suffice to meet any deadline or obtain a filing date.
The new practice was adopted without any prior notification other than an email announcement that the local IP agents received on June 8, 2016 from the IPO.
Source: www.petosevic.com
Jun 28, 2016 (Newsletter Issue 12/16)
No More Class Headings in Trademark Applications
Based on the ministerial decision No. 239 of 2011, the General Department for Intellectual Property Protection in Yemen issued a public notice on May 4, 2016, related to the use of class heading in trademark applications. This new regulation entered into force on June 6, 2016.
According to the notice, the use of class heading in trademark applications will no longer be an accepted practice. Trademark applications with class heading will be refused, and the applicant should specify the goods/ services for which registration is sought.
Source: www.agip.com
Jun 28, 2016 (Newsletter Issue 12/16)
Madrid Protocol in TM Amendment Bill Included
The National Assembly on April 14, 2016, approved the General Laws Amendment Bill, which includes amendments to the Trademark Act to incorporate Zimbabwe’s accession to the Madrid Protocol. The Bill now must be prepared for submission to the President and obtain his assent. It will then be published in the Government Gazette.
Upon publication it will become law, but the Ministry of Justice will need to draft regulations to enable implementation of the Protocol by the Registrar of Trade Marks Office. It is not clear how long the process will take. Meanwhile, applications filed cannot be processed until the regulations are published.
Source: Trademark Office Practices Committee—Africa Subcommittee as contributor and Sara Moyo, Honey & Blanckenberg, Zimbabwe as verifier in INTA Bulletin, June 15, 2016, Vol. 71, No. 10
Jun 28, 2016 (Newsletter Issue 12/16)
New IP Court to Be Established Soon
On June 03, 2016, the Parliament of Ukraine adopted a law on reforming the judicial system of Ukraine. Currently, the law is awaiting the President’s signature. The reform provides for establishing the High Court on Intellectual Property Issues by autumn 2017 as a court of the first instance for copyright, trademark and patent disputes. Judicial decisions will be reviewed in the court of appeal within the chamber of the Supreme Court of Ukraine.
As from 2017 only attorneys-at-law (barristers) will be authorized to represent parties in intellectual property court. Prior to adopting the new law, patent attorneys, company directors and legal advisors were also allowed to represent their clients in court.
Further, the judicial reform has also affected the reform of judgment enforcement authorities. The new institution of private judicial executors appeared. For right holders, it is a chance to procure judgment execution after winning a case in a more effective manner. Meanwhile, it is unclear how to execute a judgment of a specialized IP court in foreign countries, which have already signed international treaties on the enforcement of judgments in civil, criminal and commercial cases.
Source: Synergy IP Law Agency, Ukraine
Jun 28, 2016 (Newsletter Issue 12/16)Consultations on Proposed Changes to Official FeesThe Canadian Intellectual Property Office (CIPO) opens consultations on proposed adjustments to trademark and patent fees.
To address these changes, CIPO is now consulting on proposed adjustments to the trademark and patent fees and their related service standards. Under the User Fees Act, all new fees and services set by the Government of Canada must be established in accordance with the process set out in the legislation from the amendments to the Canadian Trademarks Act and Patent Act.
The Office welcomes feedback to July 5, 2016 on trademarks and patents.
Source: www.ic.gc.ca Jun 28, 2016 (Newsletter Issue 12/16)
Ratification to Singapore Treaty
WIPO announced the ratification to the Singapore Treaty by DPR Korea.
In conformity with Article 28(3), the said Treaty will enter into force on September 13, 2016.
Source: www.wipo.int
Jun 28, 2016 (Newsletter Issue 12/16)
Accession to Hague Agreement
WIPO announced the accession to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs, adopted at Geneva (the "Geneva Act") by DPR Korea on June 13, 2016.
The Geneva Act will enter into force on September 13, 2016.
Source: www.wipo.int
Jun 28, 2016 (Newsletter Issue 12/16)Comments to Changes of Use Requirements WantedOn June 22, 2016, the USPTO issued a notice of proposed rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register at 81 Fed. Reg. 22. Comments are due on or before August 22, 2016.
The USPTO proposes to revise the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to allow the USPTO - during the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to sections 8 or 71 of the Trademark Act, 15 U.S.C. 1058, 1141k - to require the submission of information, exhibits, affidavits or declarations, and additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in connection with the goods/services listed in the registration.
This will benefit the public by helping the USPTO assess and promote the integrity of the trademark register by encouraging accuracy in the listing of goods/services for which use or continued use of the mark is claimed. The proposed rules also facilitate the cancellation of registrations by the USPTO of marks that were never in use or are no longer in use, and for which acceptable claims of excusable nonuse were not submitted.
Source: www.uspto.gov Jun 14, 2016 (Newsletter Issue 11/16)Trademark Opposition System Soon AvailableThe Chamber of Deputies approved a Decree amending the Mexican Industrial Property Law (IPL) to implement a trademark opposition system in Mexico on April 28, 2016. The Decree was published in the Official Gazette of the Federation (Diario Oficial de la Federación) and will become effective on August 30, 2016.
The Mexican Trademark Office’s (MTO) needs to publish the trademark application once it is has been received within 10 business days in the Gazette and carry out a formal examination of the same, as well as the documentation filed, to determine whether the requirements specified in this Law and its Regulations are obeyed.
Third parties can now file an opposition within one month of the date of its publication in the Gazette. No extension of the one month opposition period is allowed. After that one month opposition period expires, a list of those applications that were opposed will be published in the Gazette within the following 10 business days.
The following needs to be noted:
- The opposition will not result in any suspension of the registration process;
- Opposing an application does not grant the opposing party any status as an interested third party;
- The opposition shall not automatically determine the outcome of the in-depth examination carried out by the MTO; and
- The MTO may consider in its analysis the opposition and statements made in response by the applicant.
Under the prior system an in-depth examination of an application was carried out by the MTO based on the information or documentation at hand.
With the new system third parties receive the possibilities to file information, evidence, and documentation regarding their respective marks that will allow the MTO to better assess the registrability of a distinctive element in a new application. By this a new registration that could infringe or jeopardize previously granted rights will be weakened.
For further information on how the opposition system will work, please check here
Source: Hogan Lovells, Mexico and Bufete Soni, Mexico
Jun 14, 2016 (Newsletter Issue 11/16)
Cease and Desist Letters Mandatory Before Infringement Lawsuits
Russia has recently amended the regulations that govern the procedures in economic courts.
As a result, as of June 1, 2016, the claimants have to first submit a cease and desist letter, i.e. apply the out-of-court procedure, and then wait for 30 days before filing a court action.
Before this change, cease and desist letters were not mandatory before initiating infringement proceedings. Now, if a claimant files a court action without sending out a cease and desist letter or before the 30-day period expires, the court action will not be considered.
The new procedure applies to all IP matters with the exception of non-use cancellation actions.
Source: www.petosevic.com
Jun 14, 2016 (Newsletter Issue 11/16)
Law on Medicinal Products Expected to be Simplified
On May 31, 2016, draft law No. 4484 simplifying the procedure for registration of medicines in Ukraine (the “Law”) was adopted by the Ukrainian Parliament.
The Law may be important for owners of pharmaceutical trademarks because it is expected to provide simpler access for foreign medicines into Ukraine. This may increase competition in the Ukrainian pharmaceutical market and bring down the prices of medicine.
The Law is now awaiting the President’s signature and will become effective on the day after its official publication.
If signed by the President, the Law will:
- Reduce the term for the state registration of medicines in Ukraine from one month to ten days; and
- Introduce the simplified procedure of the state registration of medicinal products already registered by the competent authorities in the Unites States of America, Switzerland, Japan, Australia, Canada or registered under the centralised procedure by the competent authority of the European Union. Currently, the simplified procedure applies only to the registration of certain foreign medicines (such as medicines for the treatment of oncological diseases, HIV/AIDS, viral hepatitis and tuberculosis).
Source: CMS Cameron McKenna LLC, Ukraine
Jun 14, 2016 (Newsletter Issue 11/16)Opposition Period and IP Laws AmendedThe Rwandan government published Law No. 005 of 2016 and various Ministerial Orders to amend the opposition period and to introduce changes to Rwanda’s Intellectual Property Laws. The amendments became effective with the publication in the Official Gazette on April 20, 2016.
Some of the main changes are the following:
- The period for filing opposition to trademark applications and geographical indications has been amended from formerly 30 days to 60 days.
- Some of the official fees for registration, prosecution and renewal of trademarks, patents, industrial designs, geographical indications and utility models have been reduced.
- A new format of Power of Attorney is required.
- The Power of Attorney needs to be notarised for grantors whose habitual residence or principal place of business is located outside Rwanda.
- The time frame for unilateral licenses and compulsory licenses has been revised.
- Law No. 005 of 2016 now provides recognition and protection of seed and plant varieties.
For further information, please access the gazette here, available in three languages (Kinyarwanda, French and English). Please also check the article of Adams & Adams to receive additional information.
Source: Adams & Adams, South Africa and Nigerian Law Intellectual Property Watch (www.nlipw.com) Jun 14, 2016 (Newsletter Issue 11/16)Changes to Annual Fee Payment in Cayman IslandsThe General Registry of the Cayman Islands recently announced that it will prohibit advance payment of annual fees. Practice Note No. 01/2016, which goes into effect on August 1, 2016, requires all trademark and patent annual fee payments to be made on or after January 1 of the year in which they are due. A penalty has applied and will continue to apply for fees paid after 31 March.
In the past, it has been commonplace to pay annuities well ahead of time, including for years in advance or up to the next renewal date. Mark holders will lose that option when the Practice Note goes into effect. Clients wishing to take advantage of prepayment of annuities must act to do so before the end of July 2016.
Source: Caribbean IP, USA Jun 14, 2016 (Newsletter Issue 11/16)Law On Trademarks and Service Marks AmendedThe Law “On amendments and additions to some laws of the Republic of Belarus on issues of Trademarks and Service Marks protection” was adopted on January 5, 2016. The amendments will enter into force on July 15, 2016.
It is expected that the Regulation “On the Procedure of Registration of Trademark and Service Mark” will be agreed upon the main Trademark Law of the Republic of Belarus in the near future.
The major changes to the Law are defined below.
Grounds for refusal of registration
The list of grounds for refusal of registration was added and amended. Previously, registration of the trademarks consisting exclusively from marks or indications used for a designation of a kind, quality, quantity, property, purpose, value of the goods, and also of a place, time, and process of their manufacturing or selling, were not allowed. According to the amendments, registration will be refused if the mark or indication dominates in the applied sign. Also, signs, identical or similar to the extent of confusion to the plant variety or designs protected in Belarus in relation to goods of the same kind, the right to which is arisen prior to the filing date of such trademark application, will not be registered as a trademark.
Statement of classes according to the International Classification of Goods and Services
The list of goods and indication of a respective class (classes) grouped according to the International Classification of Goods and Services must be indicated in the application. Previously such indication was optional.
Filing of application (payment of fees and filing of POA)
The document confirming the payment of the patent duty in the established amount and a document confirming the powers of the patent agent should be filed simultaneously with the application or within two months from the filing date. The above-mentioned possibility has not been stipulated earlier: both documents were required to be filed simultaneously with the application.
Duration of expert examination of requested sign
Expert examination of a requested sign which is effected upon the end of the preliminary expert examination shall be conducted within two years from the date of acceptance of trademark application into consideration.
Restoration of the missed time limits
According to the amendments, following terms could be restored:
The time limit for responding to preliminary expert examination request; for responding to expert examination request; for submission of a petition for conducting an expert re-examination and the time limit for loading a complaint with the Appeal Council.
It is possible to restore mentioned time limits within three months from the date of their expiration on condition that restoration fees have been paid and the reasonable excuse of time limit expiry has been proved.
Publication of data about trademark application and registration
The data of the trademark application which was accepted for consideration will be published on the official website of the patent body within two months from the date of acceptance for consideration. Publication of the data about trademark application has not been stipulated earlier.
At the same time, the data relating to the registration of a trademark and entering in the Register will be published in the official edition of the patent body within two months after the date of registration of the trademark in the Register instead of three months which were established previously.
Recognition of Trademark as Well-Known
The data on well-known trademarks were published in the official bulletin within three months from the date of their entering in the list of well-known trademarks. This term has been reduced to two months.
Also, the term for appealing the Decision of the Appeal Council was reduced from one year to six months.
Moreover, some changes to the Regulation “On the Procedure of Registration of Trademark and Service Mark” have been announced at the meeting with the patent attorneys of the Republic of Belarus, which was held on May 30, 2016. The changes include the following:
- The information about divisional and conversed trademark applications will be clarified;
- A new form of PoA is planned to be implemented. Applicant must manually indicate full list of attorney’s power by himself;
- The payment term of fees related to certificate issuance, trademark registration in the State Register and its publication will be prolonged. After expiration of the 2-month term, it will be possible to pay the above-mention fee during three extra months together with a 50% surcharge.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jun 14, 2016 (Newsletter Issue 11/16)Madrid Fee Process Changed by IP AustraliaIP Australia will stop collecting and forwarding Madrid Export fees under Rule 34(2) of the Common Regulations under the Madrid Agreement and will stop accepting select forms on behalf of WIPO as of July 1, 2016.
Customers will instead pay and file directly to the International Bureau through their portal, enabling them to interact directly with the office administering their request. In paying directly to the International Bureau customers can be assured the correct fee has been paid based on the exchange rate at the time.
For further information and to access the list of forms which now need to be lodged directly with WIPO, please click here
It should be noted that the process for filing new export applications through the Madrid e-filing system is still available through the IP Australia’s e-services.
Source: www.ipaustralia.gov.au Jun 14, 2016 (Newsletter Issue 11/16)Submission of Trademark Opposition via E-Service RequiredAs from May 1, 2016, the French National Trademark Office requires the submissions of trademark oppositions only via e-service.
In addition, as from June 1, 2016, all subsequent exchanges (observations in reply to the opposition) and also submission of observations must be submitted exclusively via the online service of the Office.
This is pursuant to the decision of the Director n°2016-69 of April 15, 2016 which can be accessed here (available in French only). This is also in accordance to urge the public to use e-services.
Source: Ab Initio, France May 31, 2016 (Newsletter Issue 10/16)
Official Fees Slightly Reduced
The Israel Trademark Office reduced official fees on January 1, 2016. The new official fee for filing a trademark application is ILS 1,606 for the first class and ILS 1,206 for each subsequent class.
Official fees are updated once a year in Israel (each January 1st) and this is the second time that those fees are reduced after years of increase.
Source: Ezratty-Farhi Law Firm, Israel
May 31, 2016 (Newsletter Issue 10/16)
Official Fees Increased
The Syrian Minister of Internal Trade and Consumer Protection issued the Ministerial Decision No. 1171 of 2016 regarding the increase in official fees of trademarks and designs.
The decision was published in the Official Gazette, and entered into force on May 22, 2016.
According to this decision, the fees increase will be applied to search, publication and administrative fees of the application forms regarding the designs and trademarks new applications including all the recordals (such as assignment, changes…etc.), as well as retroactively to those applications, for which relevant first or second publication fees have not been paid yet.
Source: www.agip.com
May 31, 2016 (Newsletter Issue 10/16)
IP Procedures Optimised
The Ecuadorian Institute of Intellectual Property (IEPI) has launched a program for the optimisation and automatization of procedures within the framework of the National Plan for the Simplification of Procedures. The new online processes will speed up the applications and registrations filed before the IEPI and reduce the response times.
Processes and response times for trademark, slogan and trade name registrations should be reduced to six months. Additionally, the response time for distinctive sign oppositions will be reduced to nine months.
The IEPI has also reported that the number of requirements for the inscription of the following contracts will be reduced: databases, computer programs, audio-visual works, literary works and phonograms. The response time for these processes will be one day.
Source: ww.moellerip.com, www.propiedadintelectual.gob.ec
May 31, 2016 (Newsletter Issue 10/16)
New Regulation on Customs Enforcement
A new regulation on customs enforcement of intellectual property rights, modelled after the EU Regulation No. 608/2013, entered into force in Albania on January 12, 2016.
The new regulation introduces an exhaustive list and definitions of IP rights, in line with Albania’s IP laws. It also clearly specifies the procedures and deadlines that the Albanian customs authorities and/or IPR owners should follow in case of suspected IPR-infringing goods.
The new regulation also introduced a new application for action form, similar to the EU form used under the EU Regulation. The application for action may be submitted either electronically or in hard copy. Currently, electronic submission is only possible by email, as the customs authorities are still developing the online application system.
The new application must contain mandatory information on genuine goods, comprising (i) a more detailed description of goods including average market price and distinctive features; (ii) places of production; (iii) names of involved companies such as manufacturers, suppliers, importers, exporters, consignees and authorized traders. Omitting mandatory information may lead to rejection of application.
Finally, the new application is to be submitted upon or at any time before the expiration of the application for action granted under the former regulation.
Source: www.petosevic.com
May 31, 2016 (Newsletter Issue 10/16)New Payment Tools Launched by USPTOThe USPTO launched two new online fee payment tools to the public: The Financial Manager and the Patent Maintenance Fees Storefront. For more information, please click here
Source: www.uspto.gov May 31, 2016 (Newsletter Issue 10/16)
IP Bureau of Sint Maarten Opened
On April 8, 2016, the Bureau for Intellectual Property of Sint Maarten (BIP SXM) has opened.
The Benelux Office for Intellectual Property (BOIP) has entered into an agreement with Sint Maarten and is responsible for the administration of Sint Maarten trademark applications. The Bureau in Sint Maarten takes care of the assessment of the applications on absolute grounds and delivers the titles.
Source: www.boip.int
May 31, 2016 (Newsletter Issue 10/16)Databases of Trademarks and Designs UpdatedOn May 27, 2016, the Estonian Patent Office provides an updated platform on the databases of trademarks and industrial designs. The Office informs that these databases will be regularly updated.
Source: www.epa.ee May 31, 2016 (Newsletter Issue 10/16)Comments to Proposed Fees Adjustment WantedOn May 27, 2016, the USPTO issued a notice of proposed rulemaking relating to trademark fee adjustment in the Federal Register. Comments are due on or before July 11, 2016 to the USPTO’s notice, which was published at 81 Fed. Reg. 103.
The rule proposes to set or increase certain trademark fees, as authorized by the Leahy-Smith America Invents Act. The proposed fees will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.
Source: www.uspto.gov May 31, 2016 (Newsletter Issue 10/16)Official Fees Increased/TM Applications PublishedBahrain has increased the official fees to conform to the Law 6/2016 of the GCC Trade Mark Law and its Implementing Regulations which came into immediate effect as of May 29, 2016. A copy of the new official charges is available here.
The new official fees for filing up to registration for a trademark registration have increased to BHD 650 (approx. USD 1,722). The new official fees will cover all trademarks matters filed from May 29, 2016 as well as retroactively for pending trademarks applications.
Furthermore, the Bahraini Trademarks Office has issued new stipulations to enforce the Article 11 of Executive Regulations of GCC Trademark Law issued with the decision No. 65/2016, according to which the accepted trademark applications will be published on the official website (www.moic.gov.bh) of the Ministry of Industry, Commerce and Tourism every Thursday.
Source: JAH & Co. IP, Qatar May 31, 2016 (Newsletter Issue 10/16)Original PoA RequiredThe Westbank Trademark Office has issued directives stating that it is no more permitted to file trademark applications in this jurisdiction without the original legalized power of attorney which has to accompany the application at the time of filing.
Earlier it was possible to file the trademark application without the required legalized power of attorney which could be submitted within two months from the date of filing which can be extended for one month time only.
Source: JAH & Co. IP, Qatar May 18, 2016 (Newsletter Issue 9/16)Publication of Renewals RequiredThe Ethiopian Trademarks Office has issued new stipulations to enforce the Regulation of Renewal of 2006 Act No. 25 clause 4, which requires all renewals to be published in the Official Gazette and a local newspaper.
With immediate effect, the trademark office shall now record the effecting of a renewal registration and thereafter notify the same in the IP Gazette and a newspaper having nationwide circulation in Amharic. It is left to the trademark owner to optionally notify in an English speaking newspaper as well.
Source: JAH & Co. IP, Qatar May 18, 2016 (Newsletter Issue 9/16)
Draft Amendments to TM Opposition Approved
The Mexican Senate has discussed and approved the draft amendments that will introduce the trademark opposition procedure in the Mexican IP Law.
According to the draft, the trademark opposition procedure would imply the following particulars:
PUBLICATION
After the trademark application is filed, it will be published in the IP Gazette no later than 10 days after the filing date. The formal examination of the trademark application would start at the publication.
OPPOSITION
An opposition may be based on absolute and/or relative grounds. Any third party is entitled to file an opposition.
- The opposing party shall include all the documents in support of its opposition.
- Official fees will be payable. The fees have not been set by the Mexican Trademark Office (MTO) yet.
- In addition, according to the proposed amendments:
i. The opponent will not be recognised as a third interested party.
ii. The examination of the application will continue alongside the opposition procedure, and the prosecution of the application will thus not be in abeyance until the opposition is decided.
iii. The MTO is not obliged to take into consideration the arguments included in the opposition in its examination.
SECOND PUBLICATION
A second publication will take place in order to notify the applicants of the relevant oppositions (if any). This publication will be 10 days after the one-month opposition term has expired.
APPLICANT’S RESPONSE
The applicant will be granted a one-month term (as from the date of the Second Publication) in order to contest the opponent’s grounds of refusal.
SUBSTANTIVE EXAMINATION
During the substantive examination of the application, the MTO will decide the relevant opposition as well as other grounds of refusal that the Examiner might identify.
SERVICE TO THE OPPONENT
The MTO will inform the opponent of its final decision.
Source: Dumont Bergman Bider & Co., S.C., Mexico
May 18, 2016 (Newsletter Issue 9/16)Final Draft on IP Law IntroducedOn April 6, 2016, the final draft of the "Law on Industrial Property" was introduced to the Turkish parliament. The draft would substantially strengthen the protection of intellectual property rights in Turkey and will replace the current decrees governing intellectual property after its adoption.
The draft law was prepared in accordance with EU law and practice as Turkey works to comply with EU requirements , leading the way for substantial change to Turkey’s intellectual property rights practice for patents, utility models, trademarks, industrial designs and geographical indications.
For more information, please see the contribution of the authors Mine Güner & Canan Aktaş, Esin Attorney Partnership, Member firm of Baker & McKenzie International, Turkey here
Source: Esin Attorney Partnership, a member firm of Baker & McKenzie International, a Swiss Verein, Turkey May 18, 2016 (Newsletter Issue 9/16)New Status Feature LaunchedOn May 7, 2016, the USPTO launched a new status feature in TSDR called the TM5 Common Status Descriptors. This feature provides status of applications and registrations at the USPTO using a uniform set of icons and terms that were cooperatively developed by the TM5. Please find more information here
Source: www.uspto.gov May 18, 2016 (Newsletter Issue 9/16)
Trademark Examination System Amended
The Korean Intellectual Property Office (KIPO) recently revised several aspects of the examination system for trademarks in order to improve the convenience of applicants. Some of the most important changes include the following:
- Expansion of the scope for amendments regarding product classes:
Under the previous regulations, it was not permitted to add an additional product class as this was regarded as a change of the original content of the application. For example, it was not permitted to add the class "business suits" to an already existing class "clothes" in order to specify the scope of protection. According to the new regulations, however, it is permitted to add additional product classes as long as these classes do not extend the scope of protection.
- Extension of the term for submitting statements of opinion:
Under the new examination standards, the time period for submitting a statement of opinion in response to office actions was extended from previously two months to four months calculated from the day of receipt of the office action.
Source: www.epo.org
May 18, 2016 (Newsletter Issue 9/16)
Trademark Act Amended
The Korean Trademark Act has been amended, effective from September 1, 2016. The main changes relate to non-use cancelations and unregistrable trademarks.
- Non-Use Cancelation Trials:
Under the current Korean Trademark Act, only an interested party can file a non-use cancelation action. However, under the amended Korean Trademark Act, any person will be allowed to do this.
Under the current Act, an unused trademark right is extinguished from the date the non-use cancelation trial decision becomes final and conclusive (i.e., there is no retroactive effectiveness). However, under the amended Act, an unused trademark right shall be extinguished from the date the non-use cancelation action was filed with the Trial Board, which means there will be retroactive effectiveness.
- Unregistrable Trademarks:
Under the current Korean Trademark Act, whether a trademark application is confusingly similar to another person’s prior registered mark is determined on the basis of the date when the junior trademark application was filed. However, under the amended Korean Trademark Act, it shall be determined on the basis of the date when the junior trademark application is examined. This means that if the cited prior registration has been invalidated, canceled, abandoned, or assigned to the junior applicant, it will no longer be an obstacle.
Under the current Korean Trademark Act, an identical or similar trademark application should be filed, in principle, one year after another person’s prior registered mark has been extinguished. However, under the amended Korean Trademark Act, this requirement has been removed.
Source: INTA Bulletin, May 15, 2016, Vol. 71, No. 9
Contributor: Markkorea Patent and Law Firm, South Korea
Verifier: DK Choi & Partners, South Korea
May 18, 2016 (Newsletter Issue 9/16)
Formalities for Class 5 Applications Revised
The Trademark Office (TMO) in Baghdad recently introduced requirements on trademarks applications in class 5, even though there was no Ministerial Resolution issued in this regard.
Applicants are now required to provide the information listed below when filing applications covering pharmaceutical and veterinary preparations and sanitary preparations for medical purposes. This will apply on all new as well as pending applications that have not been examined yet.
1. International non-proprietary name
2. Name of manufacturer
3. Name of distributor
4. Product label
After submission of the above information, the TMO is expected to solicit the approval of the Ministry of Health before applications are placed for examination. The application will be rejected on formal grounds if the applicant fails to provide all of the relevant information. It is still unclear whether the information must be admitted at the time of filing or within a specified period of time from filing date.
Source: SABA & Co Intellectual Property, Lebanon
May 02, 2016 (Newsletter Issue 8/16)
Accession to Singapore Treaty
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by the Republic of Korea on April 1, 2016. The Treaty will enter into force on July 1, 2016.
Source: www.wipo.int
May 02, 2016 (Newsletter Issue 8/16)Scope of IR Protection on French Overseas TerritoriesWIPO announced that the National Industrial Property Institute of France (INPI) has provided information to WIPO on the French Overseas Territories which are covered by a designation of France or a designation of the European Union in an application for international registration or in a designation subsequent to the international registration.
For further information, please see the public note here
Source: www.wipo.int May 02, 2016 (Newsletter Issue 8/16)Original Registration Certificate for Renewal Now RequiredAn official notification has been issued by the trademark authorities of Kuwait stipulating that all new renewal applications to be filed in this jurisdiction will require the original registration certificate for endorsement purpose at the time of filing. As per the old practice, a renewal application could be filed and the original documents could be submitted at a later date.
If the original registration certificate is not available anymore a certified copy of the registration certificate can be used for the renewal purpose instead.
Source: JAH & Co. IP, Qatar May 02, 2016 (Newsletter Issue 8/16)Abandoned Applications Due to Incomplete Documentation The Trademark Law (Trademarks & Indications Law No. 21 of 1957 with Amendments), Chapter 2 Article 16 is now applied by the Iraqi Trademarks Registrar strictly.
Article 16 implies that where registration of a mark is not completed within six months from the date of the application by reason of default on the part of the applicant the Registrar may inform the applicant, in writing, to complete the registration within the period prescribed in the regulation made under this law. Otherwise he shall be considered as having abandoned the application.
As per verbal circular, all the applicants who have pending applications under the series number 60,000 will be informed to submit the requisite documents within 7 days of the issue of the notice. Applications with incomplete will be considered as abandoned.
Applications filed under the above reference number should immediately complete the documentation.
Source: JAH & Co. IP, Qatar May 02, 2016 (Newsletter Issue 8/16)
Official Application Fee Amended
The Moroccan Industrial and Commercial Property Office has revised its fee schedule for IP protection matters.
As of March, 2016, the official fee for filing a trademark is MAD 1,200 for the first class and MAD 150 for each additional class.
Source: www.ip-coster.com
May 02, 2016 (Newsletter Issue 8/16)Trademark Examination Guidelines RevisedThe Japan Patent Office (JPO) extensively reviewed and revised the contents and structures of the Trademark Examination Guidelines to make trademark examination more understandable for users. The revised Trademark Examination Guidelines will be applied in trademark examinations conducted on or after April 1, 2016.
It is expected that with the revision it will be easier to register a trademark or a corporate catch-line.
For further information, please see here (in Japanese only).
Source: www.harakenzo.com May 02, 2016 (Newsletter Issue 8/16)Search-Related Data on Design Registration ApplicationThe Japan Patent Office has begun including notification of search-related information with all notices of decision of registration of design drafted on or after April 11, 2016. This is part of an initiative to provide information relating to design examination. The notifications will provide information regarding the Japanese design classification for which a prior design search was performed during examination of a design registration application.
For further information on the notification, please click here
Source: www.harakenzo.com May 02, 2016 (Newsletter Issue 8/16)
PoA for E-Filing No Longer Required
The Department of Registrar of Companies and Official Receiver in Cyprus announced that Powers of Attorney will no longer be required for trademark applications which are filed and renewed electronically.
The Registrar also announced that applications filed and renewed electronically will receive a higher priority.
Source: www.agip.com
Apr 20, 2016 (Newsletter Issue 7/16)Deadline for Submitting Evidence on Erroneous Abandonment of TrademarksIn March 2016, the Indian Trade Marks Registry announced that numerous trademark applications had been abandoned for non-filing of response to the examination report. Subsequently, there had been a lot of turmoil and numerous complaints were received by the Office in this regard.
Taking note of such complaints the Registrar issued a Public Notice on April 4, 2016. The Controller General assured that appropriate measures shall be taken to reinstate applications and oppositions which were erroneously abandoned.
The respective applicants or their authorised agents concerned are requested to submit representations containing relevant details and sufficient documentary evidence substantiating their case until April 30, 2016.
For further information, please see the public note here
Source: S. S. Rana & Co., India and www.agip.com Apr 20, 2016 (Newsletter Issue 7/16)
Faroe Islands Now Covered by Madrid Protocol
The Faroe Islands are now part of the Madrid System with effect from April 13, 2016.
On January 13, WIPO had notified the deposit by the Government of the Kingdom of Denmark of a declaration that withdrew the declaration made upon ratification of the Madrid Protocol to the effect that "the Protocol should not apply to the Faroe Islands".
Source: www.wipo.int
Apr 20, 2016 (Newsletter Issue 7/16)Opposition Period and Examination AmendedThe opposition period and official examination have been changed as of April 15, 2016.
The opposition period is now 3 months from the application date. Before, it was 6 months from the publication of registration.
Further, the Polish Patent Office examines trademark applications only on formal and absolute grounds. The examination on relative grounds was abolished.
Source: Kulikowska & Kulikowski, Poland Apr 20, 2016 (Newsletter Issue 7/16)Trademark Act Amendments ApprovedThe National Legislation Assembly of Thailand approved the proposed amendment to the Trademark Act B.E. 2534 (“TMA”) on February 18, 2016. The amended TMA will become effective after its publication in the Government Gazette expected in the first half of 2016.
Some of the major changes and additions to the Trademark Act are the following:
- Official fees for filing applications, oppositions, appeals and renewals will be increased
- Sound, 3D marks and shape marks will be soon registrable.
- Acquired distinctiveness through use will be soon possible
- Multiple-class applications will be allowed while single-class applications will remain possible
- The periods for oppositions, appeals will be shortened
- Longer periods for paying registration fees will be soon available
- International trademark registration is to be expected after the accession to the Madrid Protocol
The law firm LawPlus Ltd. has summarised the approved amendments in an article which can be seen here
Source: LawPlus Ltd., Thailand Apr 20, 2016 (Newsletter Issue 7/16)New Intellectual Property Law in ForceThe Ugandan Industrial Property Act of 2014 is now in force despite the fact that no Regulations have been passed. The new law does not concern trademarks. It refers to patents, utility models, industrial designs and so-called 'technovations', which are defined as solutions to specific problems in the field of technology.
For more information, please check here
Source: www.spoor.com Apr 05, 2016 (Newsletter Issue 6/16)Change from Multi- to Single-Class SystemThe Afghan Trademark and Patent Office (TMO) has shifted its classification system from multi-class to single class applications. The said decision was communicated via email circular.
The notification was not clear on how the TMO is going to treat pending trademark applications as well as trademark registrations following this new classification system.
More clarifications will follow as soon as available.
Source: JAH & Co. IP, Qatar Apr 05, 2016 (Newsletter Issue 6/16)
Multi-Class Application Now Possible
The Laos Intellectual Property Department, Ministry of Science and Technology has issued the Notice No. 57/MOST.DIP. According to this Notice, multiple-class application for trademarks are officially allowed as from February 1, 2016.
Depending on the brand registration and development strategy as well as protection for trademark, the applicant can choose a single-class or multi-class application.
Source: www.ageless.com.vn
Apr 05, 2016 (Newsletter Issue 6/16)Official Renewal Publication Fee IncreasedAs form March 24, 2016, new official publication fees for renewal of trademark registration has been implemented. The Saudi Trademark Office has raised the official publication fees from SAR 300 to SAR 3,000 for each class. The total official fees for trademark renewal per class are 6,000 SAR or 1,600 USD.
Further, the renewal of trademarks will be filed and completed online.
Source: JAH & Co. IP, Qatar Apr 05, 2016 (Newsletter Issue 6/16)List of Trademarks Eligible to Be Renewed The Ugandan Trademarks registry has published a list of trademarks eligible to be renewed in 2016-2017. The list of trademarks can be accessed here
Source: JAH & Co. IP, Qatar Apr 05, 2016 (Newsletter Issue 6/16)New Industrial Property Act EnactedThe Zanzibar Industrial Property Act of 2008 were enacted and published by the Minister of Justice and Constitutional Affairs in the Government Gazette of April 17, 2015 and has been made available to the public at the end of 2015. With the promulgation of the implementing Regulations in 2015, it is now possible to file and obtain protection in respect of various IP rights provided for under the New Act.
The New Act has provisions which consolidates and codifies the laws on protection of trade and service marks, patents, geographical indications, industrial designs, layout designs of integrated circuits and utility models, into one piece of legislation.
Furthermore, for the first time in Zanzibar, the New Act provided for the protection and registration of service Marks, collective marks, certification marks as well as non-traditional marks such as sound, colour and scent marks.
Few salient issues addressed in these regulations are:
- Utility models and industrial designs can now be filed in Zanzibar
- Layout designs (topographies) of integrated circuits can now be filed in Zanzibar
- Service marks, collective marks, certification marks as well as non-traditional marks can now be filed in Zanzibar
- Procedure for reclassification of trademarks
- Geographical indications can now be filed in Zanzibar
- Categorization of goods for the purposes of the registration of geographical indication provided in the third schedule
- Priority can be claimed based on an earlier application.
- Evidence under the New Act to be filed by either statutory declarations or affidavits
- Official languages are English or Kiswahili
- Registered user or license agreement can now be recorded in Zanzibar
- No refund of official fees once paid
To access the new regulation, please click here
Source: JAH & Co. IP, Qatar
Apr 05, 2016 (Newsletter Issue 6/16)
Recordal Regulation of IP Licences Implemented
On February 24, 2016, the Ministry of Law and Human Rights issued Ministerial Decree No. 8 of 2016 concerning the Requirement and Procedure of Intellectual Property Licence Recordal, which serves as an implementing regulation for the recordal of IP licences.
The Decree provides that recordal applications must be accompanied by:
1. A copy of the licence agreement (It may be possible to record a simple confirmatory agreement setting out key terms, without disclosing confidential terms);
2. A copy of the registration certificate;
3. An original power of attorney;
4. The recordal fees (which are as stipulated in Government Regulation No. 45 of 2014 concerning Types and Tariffs of non-tax state revenue applicable to the Ministry of Law and Human Rights);
5. A special statement form confirming that the recorded licence agreement relates to intellectual property that is:
- still within the protection period;
- does not harm the national economy, development of technology; and
- is not against the provision of law regulation, ethics and public order.
It should be noted that although the Decree states that applications can be filed either electronically or non-electronically, electronic filing is not currently available to the public.
Once filed, every application for IP licence recordal will be examined. If there are formality issues, the applicant will be notified and given 10 days within which to comply, failing which the application will be deemed withdrawn. If all requirements have been completed, the licence agreement will be recorded and published.
The recordal will be valid for five years; thereafter, subsequent re-applications can be made.
Source: Rouse & Co. Internatinal LLP, Indonesia
Apr 05, 2016 (Newsletter Issue 6/16)
Accession to Singapore Treaty
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by Japan on March 11, 2016. The Treaty will enter into force on June 11, 2016.
The said instrument contained the following declaration:
"Pursuant to Article 29(1) of the Treaty, the provisions of Article 3(1)(a) and 1(b), Article 5(1) and (4), Article 7(2), Article 8(5), Article 11 and 13(1)(a), (1)(c), (2), (4) and (5) shall not apply to defensive marks".
Source: www.wipo.int
Apr 05, 2016 (Newsletter Issue 6/16)Trademark Practice Guidelines UpdatedIPONZ has updated the trademark practice guidelines with regard to amendments to trade mark applications and authorisation of agency requirements for mergers.
The Amendments to trade mark applications section now clarifies the requirements for requesting an amendment on a trademark application on the same day that the application is filed.
The Agents section now clarifies that an agent may only request for the merger of two or more trademark applications if they are the agent for all of the trademarks on the merger request.
For more information, please check here
Source: www.iponz.govt.nz Apr 05, 2016 (Newsletter Issue 6/16)
Official Fees Reduced
The official registration and renewal fees have been reduced as of April 1, 2016.
The trademark registration fee has been reduced from JPY 37,600 to JPY 28,200 per classification. The trademark renewal fee has been changed from JPY 48,500 to JPY 38,800 per classification.
The fee for trademark rights based on international registration is equivalent to the above registration and renewal fee.
Source: AXIS Patent International, Japan
Mar 17, 2016 (Newsletter Issue 1/16)
Accession to Madrid Protocol by Lao People's Democratic Republic
On December 7, 2015, the Lao People's Democratic Republic (Lao PDR) acceded to the Madrid Protocol for the International Registration of Marks, following the deposit of its instrument of accession with the Director General of the World Intellectual Property Organization (WIPO).
The Protocol entered into force on March 7, 2016.
Source: www.wipo.int
Mar 16, 2016 (Newsletter Issue 5/16)
Design Registration Certificates Only Electronically
On February 23, 2016, the Brazilian National Institute of Industrial Property (INPI) informed that the industrial design registration certificates are available only in an electronic format. Issuing of paper certificates are no longer possible.
Additionally, INPI has published on its website more than 7,200 documents with respect to granted certificates issued between 2014 and 2015. Thus, INPI provides now an online system covering the whole process for industrial design protection.
The issuance of industrial design registration certificates in electronic format is regulated by INPI Resolution 159/2016, published in the Industrial Property Gazette No. 2355.
Source: Moeller IP Advisors, Argentina
Mar 16, 2016 (Newsletter Issue 5/16)
Practice Change to IPONZ Returned Mail Process
IPONZ informed on March 8, 2016, that the office has updated its process in relation to notifications about renewals and the expiry / lapse of intellectual property rights.
The address for service on the IPONZ register is used by IPONZ to send notifications to IP rights holders. This includes any situations where IPONZ needs to send notification via standard mail.
As of March 8, 2016, IPONZ will no longer re-send any standard mail that is returned due to an invalid physical address for service. IPONZ will also cease its practice of subsequently attempting to locate these IP owners.
The IP rights holder is responsible for keeping their address for service and other contact details up to date with IPONZ. In the event of a change in address, it is very important that a notice of this change is filed with IPONZ to avoid any missed notifications.
Source: www.iponz.govt.nz
Mar 16, 2016 (Newsletter Issue 5/16)Practice Change on Search Requirements and MoreThe Iraqi Trademark Authorities have stipulated new directives which came into effect as of March 3, 2016.
Major changes are:
- Obligatory search before trademark registration has now been adopted with each class of goods or services to be searched separately with official request. The Official Search Fees for each class of goods have been reported to be 20,000 Iraqi Dinar (+/- 19 USD). The authorities confirm that the time frame to conduct the official search will be 10 working days.
- Depending upon the official search report, the trademark can be progressed to registration or a negative report can be challenged at the court of law.
- The Iraqi Trademark Office has discontinued the practice of insisting on Arabic transliteration to be included in the logo of the marks which is in non Arabic languages.
- The Registrar will continue accepting the new applications without the power of attorney while the same can be filed belatedly within non-extendable six months from the filing date at no extra fees.
- For recordal of assignment, change of name/address, mergers and license; all requisite documents are to be submitted in the original at the time of filing. Before, the original documents could be filed at a later stage after filing.
These new directives are expected to expedite the prolonged delays faced by the Iraqi Trademark Office in which the registration was taking approx. 2 to 3 years.
The official circular is to be published soon.
Source: JAH & Co. IP, Qatar Mar 16, 2016 (Newsletter Issue 5/16)
E-Services Soon Available
On February 24, 2016, the Patent Office of the Republic of Poland announced the implementation of the e-Services project, part of the Software Package developed by the Cooperation Fund.
The e-Services project aims to develop a set of web-based tools for national and regional EU IP Offices to facilitate the electronic filing of trade mark oppositions, trade mark and design registrations and renewals, trade mark cancellations and design invalidities.
Source: www.tmdn.org
Mar 16, 2016 (Newsletter Issue 5/16)Revised Examination Guidelines for DesignsThe Japan Patent Office informed that with regard to the implementation of Chapter 4 of Part 7 of the Design Examination Guidelines（March 11, 2016 Revised Edition), the Section “74.4.3 Creative Difficulty” shall be applicable to the applications for design registration which will be examined on or after April 1, 2016, and those other than Section “74.4.3 Creative Difficulty” shall be applicable to the applications for design registration filed on or after April 1, 2016.
For further information, please click here
Source: www.jpo.go.jp Mar 16, 2016 (Newsletter Issue 5/16)Japanese Translation of Nice ClassificationThe Japan Patent Office (JPO) released the “International Classification of Goods and Services in Japanese translation with Similar Group Codes” corresponding to the International Classification of Goods and Services 10th edition, version 2016.
The International Classification of Goods and Services, 10th edition, version 2016 is applied to the applications on or after January 1st, 2016.
The Japanese translation of the Nice Classification can be accessed in an alphabetical list with similar group codes here. For further information, please see JPO's website here.
Source: www.jpo.go.jp Mar 16, 2016 (Newsletter Issue 5/16)
Accession to Banjul Protocol
Sao Tome and Principe became the 19th member of the ARIPO on May 19, 2014. However, the implementation of the ARIPO international filing system requires an accession to the Harare and Banjul Protocol, and this was executed by Sao Tome and Principe in two stages:
1) Accession to the Harare Protocol on Patents and Designs
Sao Tome and Principe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of ARIPO on May 19, 2014. This brings the number of active ARIPO Member States which are parties to the Harare Protocol (on Patents and Designs) to 18.
Following the accession to the protocol, it has become possible for residents of the Sao Tome and Principe to file Patent and Industrial Design applications with ARIPO as a receiving Office.
2) Accession to the Banjul Protocol on Marks
On November 27, 2015, Sao Tome and Principe deposited an Instrument of Accession to the Banjul Protocol on Marks.
The Banjul Protocol entered into force, with respect to Sao Tome and Principe on February 27, 2016, and with effect from February 27, 2016, Sao Tome and Principe becomes eligible for designation as a Member States under the Banjul Protocol.
The accession of the Banjul Protocol by Sao Tome and Principe brings the number of Member States party to the Protocol to ten (10). Residents of Sao Tome and Principe will be able to file trademark applications with ARIPO as a receiving Office.
Source: www.jacksonettiandedu.com
Mar 02, 2016 (Newsletter Issue 4/16)New Industrial Property Code Approved The new Mozambique Industrial Property Code (New IP Code) was approved by the Council of Ministers of Mozambique by Decree no 47 of 2015, on December 31, 2015. The New IP Code will come into force on March 31, 2016 and will replace the 2006 Industrial Property Code (the "2006 IP Code").
Differences between the 2006 IP Code and the New IP Code relate mainly to revised time periods, re-wording and clarification of certain sections, administrative and format revisions. A limited number of substantive legal changes have been made. The New IP Code was not published for comment and concerns pertaining to issues such as delays in handing down decisions by the Administrative Courts have not been addressed. Short, unextendable deadlines for responding to official actions and provisional refusals have been retained.
With regards to trademarks, the following amendments can be reported:
- The New IP Code extends comparison of marks upon examination to “related” or similar goods and services.
- Opposition period will be thirty days of the advertisement with a further extension for another sixty days
- It is no longer essential to show that the declaration of intent to use a mark should relate to all goods or services included in the registration.
Further, the industrial property bulletin will soon be published monthly instead every two months.
A summary of the most important changes concerning can be seen here
Source: Spoor & Fisher, South Africa Mar 02, 2016 (Newsletter Issue 4/16)E-Copies of Trademarks DocumentsThe Canadian Intellectual Property Office (CIPO) is offering a new service with respect to trademark, copyright and industrial design document requests. You now have the option to receive uncertified electronic copies (CD-ROM or email) of trademark, copyright and industrial design files. The new service complements an existing service for patent related documents.
Electronic copies can be requested via the web order form here. Once the confirmation of payment is received, CIPO sends an email or a CD-ROM within three business days. Fees for this new service are outlined on the Products and Services page.
Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada
Mar 02, 2016 (Newsletter Issue 4/16)Declaration of Use for International Registrations RequiredHolders of international registrations containing a designation of Cambodia must file declarations of actual use of the mark with evidence to that effect. Such declarations must be filed directly with the Office of Cambodia, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a one-year period, following five years counted from the date on which protection was granted in Cambodia, as indicated in the statement sent by the Office of Cambodia to the International Bureau of WIPO under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and
- Within a one-year period, following five years counted from the date of each renewal of the international registration.
Alternately, a declaration of non-use of the mark, stating the valid grounds, under the laws of Cambodia, can be filed with the Office of Cambodia. This declaration must be submitted by the holder’s authorized representative with a local address or by a legal representative in Cambodia. A local address is required for purposes of notification.
Failure to file declarations of either actual use or non-use of the mark will prompt the Office of Cambodia to declare, ex officio, that the mark is no longer protected.
For further information, please see here
Source: www.wipo.int Mar 02, 2016 (Newsletter Issue 4/16)Courtesy Email Reminders by USPTOHolders of international registrations designating the United States of America receive courtesy email reminders of the requirement to file affidavits of continued use in commerce by the United States Patent and Trademark Office (USPTO).
To avoid invalidation of protection under the law of the US, holders of US registrations as well as holders of international registrations containing a designation of the US are required to periodically affirm, in an affidavit, the continued use in commerce (or claim excusable non-use) of a mark with respect to the goods and services for which the mark has been granted protection. This affidavit must be filed directly with the USPTO.
As of January 2015, holders of US registrations and of international registrations designating the US receive a courtesy email from the USPTO reminding them of the upcoming deadline to file an affidavit of continued use in commerce if the holders have:
- a “live” registration on the date the reminder is sent,
- provided a valid email address to the USPTO, and
- authorised email communication with the USPTO.
These reminders are sent on the start date of the period to file the affidavit of continued use to the email addresses on record with the USPTO. The reminders identify the mark and indicate, inter alia, the deadline to file the said affidavit, as well as the grace period deadline and the filing fee per class. No reminders are sent by regular mail and no follow-up emails are attempted for undeliverable emails. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a holder who fails to meet its statutory obligations.
Holders are encouraged to use the USPTO Trademark Application Electronic System (TEAS) Change of Correspondence Address Form to indicate, update, or delete the email addresses to which the USPTO can send courtesy email reminders. Holders need to enter the corresponding US application serial or US registration number which can be found in the statement of grant of protection. Holders cannot enter the international registration number.
For further information on the requirement to file an affidavit of continued use (or excusable non-use), please check here and here
Source: www.wipo.int Mar 02, 2016 (Newsletter Issue 4/16)
Trademark Bulletin Twice per Month Now
The Turkish Patent Institute (TPI) has announced that from February 2016 onward, the Official Trademark Bulletin (Bulletin) will be published twice per month. It was previously published in the first half of each month, on the Turkish Patent Institute’s website.
Trademark oppositions must be filed within three months of the date which a trademark application is published in the Bulletin. Therefore, due to the recent changes, opposition deadlines will now fall into the first or second half of the month, according to the relevant Bulletin’s publication date.
The first bi-monthly bulletin is going to be published on February 29, 2016.
Source: Moroglu Arseven Partners, Turkey
Mar 02, 2016 (Newsletter Issue 4/16)More IPR Courts to be EstablishedThe authorities in UAE will be setting-up dedicated courts to handle intellectual property rights disputes and small claims, as per Ministerial Resolution No. 137 for 2016.
The judicial inspection department will provide specialised training to judges to assist them understand the procedures and technicalities associated with IPR cases. This will result in effectively and efficiently resolving disputes.
An intellectual property court has already been set up at the Abu Dhabi Court of First Instance. Small claims courts, which were earlier created at the Fujairah Court of First Instance, will be established at courts across the country.
Source: JAH & Co. IP, Qatar Mar 02, 2016 (Newsletter Issue 4/16)Backlog of Design ApplicationsThe backlog of industrial design applications filed between 2011 and 2013 have finally been brought under consideration of the Ministry of Economy. A circular letter has been issued on February 8, 2016, stating that the department will commence to finalize the backlog of industrial design applications soon.
Accordingly it should be noted that the publication fees should be paid within 60 days from circular or the application will be deemed abandoned.
Source: JAH & Co. IP, Qatar Feb 17, 2016 (Newsletter Issue 3/16)
Madrid Protocol to Cover Faroe Islands
The Faroe Islands will be part of the Madrid System with effect from April 13, 2016.
On January 13, WIPO has notified the deposit by the Government of the Kingdom of Denmark of a declaration that withdraws the declaration which was made upon ratification of the Madrid Protocol to the effect that "the Protocol should not apply to the Faroe Islands".
Source: www.wipo.int
Feb 17, 2016 (Newsletter Issue 3/16)
Hague Agreement to Apply to Faroe Islands
WIPO refers to the deposit by the Government of the Kingdom of Denmark, on September 9, 2008, of its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act"). The said instrument contained a declaration that "until later decision, the Geneva Act will not be applied to the Faroe Islands or to Greenland".
WIPO notified the deposit by the Government of the Kingdom of Denmark, on January 13, 2016, of a declaration according to which it withdraws the one made upon ratification of the said Act "to the effect that until further notice, the Act should not apply to the Faroe Islands".
The said declaration will enter into force on April 13, 2016.
Source: www.wipo.int
Feb 17, 2016 (Newsletter Issue 3/16)
Verification System for Trademarks
The Ministry of Supply and Internal Trade in Egypt launched a new system to enforce the protection of trademarks and limit the infringement acts that are increasing rapidly in Egypt.
By using an Android application or sending an SMS, the consumer will be able to verify instantly if a certain product is original or not. The verification message will include the product's name and the expiry date as well.
Through the new system, trademark owners will have the right to have a “sticker” put on all the products that are sold in the Egyptian market and registered at the Egyptian Trademarks Office.
At present, companies can voluntary register as part of this new verification system which may soon become mandatory.
Source: www.agip.com
Feb 17, 2016 (Newsletter Issue 3/16)Examination Guidelines AnnouncedThe Japan Patent Office announced the Examination Guidelines for Similar Goods and Services (corresponding to the Nice Classification, 10th Edition, Version 2016) and released the Guidelines in English.
The Examination Guidelines for Similar Goods and Services are applied to applications on or after January 1st, 2016.
The Examination Guidelines for Similar Goods and Services can be accessed here with further information on the implementation.
Source: www.jpo.go.jp Feb 17, 2016 (Newsletter Issue 3/16)
Mediation Law for Trademark Matters Amended
On December 21, 2015, the Argentine Congress passed Law No. 27.222, which will become effective on March 22, 2016. This new law amends Section 18 of the Mediation Law No. 26.589, and sections 16 and 17 of the Trademark Law No. 22.362.
According to the Argentine trademark legislation, an opposition automatically blocks the progress of the opposed application, and the applicant is granted a one-year term (counted as of the date on which he is served notice of the oppositions filed against his mark), to negotiate withdrawal of the complaints raised against his mark. In the absence of an amicable agreement, and in order to avoid the abandonment of his mark, the applicant should seek dismissal of the complaint through a court decision, but should before exhaust mandatory mediation proceedings.
Prior to the passing of this new law, the applicant was able to suspend the one-year term and thus prevent the abandonment of his mark as of the date on which he initiated mediation proceedings against an opponent, which may well be the day before expiration of the one-year term.
In practice, this implied that completion of the mediation stage might occur well after expiration of the one-year term. As of March 22, 2016, pursuant to this new law, failure to obtain withdrawal of the complaint, or to else bring a court action against the opponent within the one-year term will result in the lapsing of the trademark application. The effect of this amended procedure is that the initiation of mediation does no longer suspend the one-year term granted to the applicant to overcome the oppositions raised against his marks.
Consequently, before expiration of the one-year term, the applicant must either inform the Trademark authorities that withdrawal of the opposition filed against his mark was obtained during negotiations with the opponent, or else complete mediation proceedings -and if necessary bring a court action against such opponent-, to obtain dismissal of the opposition through a court decision.
Source: www.marcasurmi.com: Estudio Chaloupka, Argentina
Feb 17, 2016 (Newsletter Issue 3/16)
IP Gazette Twice a Month Now
The Lithuanian PTO informed on its website that the Official Gazette, the SPB Bulletin, will be published twice each month on the 10th and 25th day.
The information included in the SPB Bulletin issue published on the 10th day of each month will cover the period from the 16th day of the previous month to the last day of the said month as well as other official information relevant on the day of publishing. The information included in the Official Bulletin issue published on the 25th day of each month will cover the period from the 1st to the 15th day of the current month and other official information relevant on the day of publishing.
This change in the bulletin publishing process will ensure a more responsive and efficient dissemination of information on industrial property: interested persons will have a faster way to receive information about the entry into force of registered rights or changes in the Patents, Trademarks or Design Registers.
Source: www.vpb.gov.lt
Feb 17, 2016 (Newsletter Issue 3/16)Changes in Applicable Laws and FeesThe Parliament of the Republic of Latvia adopted a new law on the Industrial Property Institutions and Procedures that entered into force on January 1, 2016.
The most significant changes affect the functioning of the Board of Appeals and procedures before this institution. Starting from January 1, 2016, the Board of Appeals is renamed to the Industrial Property Board of Appeals. Its members will be appointed by the Cabinet of Ministers and will be full time employees of this dispute settlement body, rather than employees of the Patent Office of the Republic of Latvia (LPO), as it was before.
A significant change is also introduced to the applicable procedural law by replacing the administrative procedure with the civil one. The party which is not satisfied with the decision of this body is entitled to appeal the decision to the Riga Vidzeme District Court.
Further, civil insurance is now mandatory for all patent attorneys that operate in the Republic of Latvia. Also, the Association of Patent Attorneys of Latvia will develop a Code of Ethics that will be legally binding for all patent attorneys operating in the Republic of Latvia.
Another major change affects the LPO itself. Starting from January 1, 2016, the LPO is no longer a state funded budget institution, but a self-financed state institution. This change will ensure that the LPO will be able to invest more resources into development of the industrial property system in the Republic of Latvia, including more e-services, development of the patent database, various awareness raising activities, and other initiatives that will benefit the existing and potential users.
The Latvian PTO has also changed its fees. A full list of official fees is available here (in Latvian only). For more information on the changes and for a list of renewal and other relevant fees, please click here.
Source: www.lrpv.gov.lv Feb 17, 2016 (Newsletter Issue 3/16)Official Fees IncreasedThe Turkish Patent Institute ("TPI") has increased intellectual fees such as trademark application fees and renewal fees. The fee increase is applicable as of January 1, 2016.
The new official fee for a trademark application is TRY 285 in paper and TRY 190 online per class. The fee for each additional class remains the same, TRY 285 in paper and TRY 190 online. The issuance of a trademark registration certificate is TRY 795 in paper and TRY 530 online.
The complete list of trademark fees can be seen here
Source: www.tpe.gov.tr Feb 17, 2016 (Newsletter Issue 3/16)
Official Fees Increased
The Mexican Institute of Industrial Property (IMPI) has increased its official fees between 5 to 10 percent for services. The increase became effective on January 1, 2016.
The fees for filing a trademark have increased by 6.7 percent and trademark renewals by 8 percent. The fees for filing utility models and industrial designs have increased 5.1 percent.
The new official fee for filing a trademark is MXN 2,457.79.
Source: www.moellerip.com
Feb 02, 2016 (Newsletter Issue 2/16)
Official Fees Soon Reduced
The Japan Patent Office (JPO) has announced it will reduce two of its official fees for trademarks. The registration fee shall be reduced from JPY 37,600 to JPY 28,200 and the renewal fee from JPY 48,500 to JPY 38,800 effective as of April 1, 2016.
Source: Hogan Lovells, Japan
Feb 02, 2016 (Newsletter Issue 2/16)Designation of International DesignsOn December 14, 2015, WIPO received from the Intellectual Property Office of Mongolia, a clarification of the
declaration under Article 17(3)(c) of the Geneva (1999) Act of the Hague Agreement.
The designation of Mongolia in international registrations of industrial designs shall enjoy protection for the maximum duration of 15 years from the date of international registration, subject to renewal of the international registration.
The clarification notice can be accessed here
Source: www.wipo.int Feb 02, 2016 (Newsletter Issue 2/16)Status Quo Regarding Opposition SystemOn December 14, 2015, the Mexican Senate approved the proposed amendment to the Mexican Industrial Property Law (IPL) which aims to establish an opposition proceeding related to trademarks. The amendment was sent to the Chamber of Deputies and has to be studied and voted. It is proposed that the reform to the IPL, if passed by Congress, would become effective after 90 calendar days of its publication in the Official Gazette of the Federation.
The proposed amendment includes the following aspects:
- The Mexican Institute of Industrial Property (IMPI) shall proceed, within 10 business days, with its publication in the Gazette.
- This publication shall be the starting point of the opposition.
- The opportunity to oppose shall be granted to anyone, who might consider that the application violates the provisions of the Mexican Industrial Property Law (IPL).
- The opposition period shall be one month, non-extendable.
- An opposition will not suspend the examination and registration procedure nor will it prejudge whether the application is eligible for registration or not.
- Opposition does not automatically grant the role of interested party, third party or party, to the person or entity who filed it.
- The applicant shall have one non-extendable month from the effective date of the notification to file arguments related to the statements of the opponent. Failing to do so would not be deemed a tacit acceptance of the opposition.
- IMPI may consider, in its analysis, the opposition and the allegations filed by the applicant of the registration.
For more information, please click here and here
Source: Hogan Lovells, Mexico and Herrero & Asociados, Spain/Mexico Feb 02, 2016 (Newsletter Issue 2/16)Accession to Hague Apostille Convention On December 16, 2015, Chile deposited its instrument of accession to the Hague Convention of October 5, 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention").
Following the usual procedural steps, the Convention will enter into force for Chile on August 30, 2016, making it the 112th Contracting State to the Convention.
The Government of Chile has permitted the Permanent Bureau to publish copies of its internal law implementing the Convention. The Regulation itself is available here and other associated amendments are also available here (both are in Spanish only).
Pursuant to Article 12 of the Apostille Convention the Depositary shall give notice to the Contracting States of the accession of Chile.
Source: www.hcch.net Feb 02, 2016 (Newsletter Issue 2/16)
Accession to Hague Apostille Convention
On December 2, 2015, Brazil deposited its instrument of accession to the Hague Convention of October 5, 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention").
Following the usual procedural steps, the Convention will enter into force for Brazil on August 14, 2016, making it the 111th Contracting State to the Convention.
Pursuant to Article 12 of the Apostille Convention the Depositary shall give notice to the Contracting States of the accession of Brazil.
Source: www.hcch.net
Feb 02, 2016 (Newsletter Issue 2/16)CIPO Invites the Public for ConsultationThe Canadian Intellectual Property Office (CIPO) informed that they will be consulting on various themes that will help to modernize the Canadian intellectual property regime on topics such as intellectual property regulations and laws, business practices and international harmonization.
The first consultation focusses on principles guiding the harmonization of substantive patent law. The public is invited to submit comments from January 19 to March 23, 2016.
For more information, please visit the consultations and discussions page here
Source: www.ic.gc.ca Feb 02, 2016 (Newsletter Issue 2/16)
Industrial Design Applications Accelerated
Since December 2015, the Brazilian Institute of Industrial Property (INPI) is accelerating the examination of industrial design applications by means of Regulations No. 44 and 45/2015.
The first change is aimed at lowering the technical requirements for industrial design applications, especially lowering the number of requests for corrections made by the INPI. Additionally, INPI will change ex officio the title of the application when it is deemed incorrect.
The second main change is directed to the formal examination. From now on, the INPI will focus only on the examination of the figures filed by the applicant of the industrial design. This change will last at first for two years.
In Brazil, once an application is filed, INPI conducts only a formal examination, but not a substantive examination in order to assess if the industrial design is new and original. Therefore, since a substantive examination is not compulsory during the registration proceedings, the owner of an industrial design may request immediately after the grant of the registration a Merits Examination (“exame do mérito”) where INPI will examine if the design is original and new.
According to Regulation No. 45/2015, the approximate number of pending industrial design applications in November 2015 was 13,550. During 2015, 6,039 industrial design applications were filed with INPI (according to INPI statistics).
Source: Moeller IP Advisors, Argentina and www.inpi.gov.br
Feb 02, 2016 (Newsletter Issue 2/16)Amendments to Refusal and OppositionA detailed update on the adoption of the new provisions regarding the Ministerial Decree No. 500 on the Implementing Regulations of Law No. 13 of the year 2015 (GCC LAW) is now available.
Kindly note the following amendments:
- Replies to office actions must be filed within 60 days from the date of issue of the refusal;
- Final refusals by the Registrar can be appealed through Appellant Committee within 60 days of notification. Said decision is subject for appeal before the Court within 60 days from issuance;
- The opposition period is now 60 days from the publication date. Previously, while accepted trademarks were published in 3 Gazettes with a 7 day period between each publication, the opposition period was 30 days from the date of the last publication;
- Replying to oppositions must be made within 60 days from the date of notifying the applicant about the opposition.
The decision has become effective from December 28, 2015.
Source: JAH & Co. IP, Qatar Jan 20, 2016 (Newsletter Issue 1/16)
Accession to Singapore Treaty
WIPO notifies the deposit by the Government of Ireland on December 21, 2015, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The Treaty will enter into force on March 21, 2016.
Source: www.wipo.int
Jan 20, 2016 (Newsletter Issue 1/16)Nice Classification Tenth Edition, 2016 Version ImplementedAs of January 1, 2016, the Nice Classification, Tenth Edition, version 2016 (NCL 10-2016), became effective.
For further information, please click here. Changes to the class headings and a link to noteworthy changes are available here
Source: www.uspto.gov Jan 20, 2016 (Newsletter Issue 1/16)Official Fees IncreasedThe Kuwaiti Ministry of trade and industry has published the Ministrial Decision No.500 of 2015 in the Official Gazette of Kuwait (Al-Kuwait Al-Youm) issue No.1268 dated December 27, 2015 approving the GCC Trade Mark Law and its Implementing Regulations which has come into effect as of December 28, 2015.
The new official fees will be imposed as of January 1, 2016. The new official fees will cover all trademarks matters filed subsequent to the date January 1, 2016 as well as retroactively for pending trademark applications as regards to their publication and registration fees. A copy of the new official charges as published in the official Gazette can be seen here
The official fee for filing a trademark is now USD 264 for one class. The new fee for publication and registration is USD 1,586.
Source: JAH & Co. IP, Qatar Jan 20, 2016 (Newsletter Issue 1/16)Opposition System Soon to be ExpectedThe new Serbian draft trademark law, which aims to introduce the opposition system, has been sent to the government for consideration. It is expected that the new trademark law will be adopted soon. The main changes are as follows:
Observations
Under the draft law, any natural or legal person can file a written observation, only on absolute grounds, within three months from the trademark application’s publication date. This person does not become party to the proceedings. The IPO must take the written observation into consideration and send it to the applicant, who may then submit a written response within 15 days.
Oppositions
According to the draft law, the IPO will conduct formal and substantive examinations on absolute grounds. The substantive examination on relative grounds (earlier rights) will be conducted only if an opposition is filed. Namely, the holder of an earlier trademark or a well-known trademark (regardless of the list of goods/services), the licensee, or the holder of the earlier right to an individual’s name or image, copyright or industrial property right, can file an opposition based on relative grounds for refusal within three months from the application’s publication date. The trademark will not be refused if the holder of the earlier trademark or earlier right explicitly consents to the registration of the later mark. Therefore, the draft law clearly separates the absolute and the relative grounds for refusal.
Registration Certificates
Obtaining trademark registration certificate is optional under the new draft law. The certificate is issued at the request of the trademark holder and upon filing the proof of payment of the prescribed fee.
For more information, please see here
Source: www.petosevic.com Jan 20, 2016 (Newsletter Issue 1/16)
E-filing for Designs Implemented
As of December 11, 2015, the Irish Patents Office implemented e-filing for designs.
Source: www.tmdn.org
Jan 20, 2016 (Newsletter Issue 1/16)
Design Examination Guidelines Amended
The Korean Design Examination Guidelines ("Guidelines") have been amended effective October 1, 2015 to encourage examiners at the Korean Intellectual Property Office ("KIPO") to treat design applications with greater flexibility during examination. Some of the more notable amendments are outlined below.
1. Designs of Sets of Articles
Under the Design Protection Act ("DPA"), if two or more products are used together as a set (i.e., a set of utensils, a set of tea apparatus, and a set of smoking apparatus etc.), the design of the entire set may be registered as a single design as long as the set constitutes a coordinated whole. However, in practice, KIPO examiners usually did not grant registrations for sets of articles unless the set was one of those explicitly listed as an example in the Enforcement Decree of the DPA. The amended Guidelines eliminate this practice and specify that examiners should grant a registration for a set of products if the individual products genuinely constitute a set, the products are all used at the same time, and the set as a whole has a unified design.
2. Single Application for Single Design
This amendment makes clear that an article comprising several different parts that can be physically separated from each other still may be filed as a single design, as long as the entire article is traded in the market as one product.
3. Priority and Amended Drawings
In order to claim priority, the presented drawings must be identical to the drawings submitted in the original priority application. However, because Korea has a number of different formal requirements for drawings compared to other jurisdictions, KIPO often requires foreign applicants to amend the drawings in their design applications. Problems sometime arise in this regard because material amendments to the drawings in a Korean design application are not allowed after the application has been filed, and in practice whether an amendment is "material" has been determined by comparing the amended drawings with the drawings in the Korean design application as filed. As a result, foreign applicants who amend their drawings pursuant to a request from KIPO have often subsequently received an office action for making material amendments to the drawings. The amended Guidelines now recommend that examiners should consider the drawings in the original priority application as well as the drawings in the Korean application as filed when they decide whether or not material changes have been made.
4. Registrability of Screen Images
Under the amended Guidelines, neither the size nor location of a screen image (such as a graphical user interface or icon) is to be considered when determining similarity to other designs.
Further, the creativity of a screen image ordinarily is evaluated based on the claimed portions of the design only (which must be depicted in the drawings with solid lines), but under the amendment, the function or usage of other portions of the drawings (depicted with dotted lines) also can be considered if necessary to fairly evaluate such creativity.
Source: www.kimchang.com
Jan 20, 2016 (Newsletter Issue 1/16)Pricing Structure and Official Trademark Fees ChangedThe Finnish Trademark Office announced that they have changed the pricing structure and some of the fees for trademarks on January 1, 2016.
Some changes to registered trademarks are now free of charge, such as changes to the owner's name or domicile, and changes of representative. The fee for other changes, such as transfer or pledging, has been raised from EUR 50 to EUR 100.
For renewals of trademarks and collective marks, the Office has introduced a two-tier pricing system, where the fees for renewals done online in Finnish or in Swedish are lower than via paper forms. The renewal fee is EUR 275 online, and EUR 300 via paper form.
For more information, please click here
Source: www.prh.fi Jan 20, 2016 (Newsletter Issue 1/16)Accession to Hague Agreement On December 16, 2015, the Government of Turkmenistan deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs. A list of the Contracting Parties to the Hague Agreement is available here
The Act will enter into force on March 16, 2016.
Source: www.wipo.int Jan 20, 2016 (Newsletter Issue 1/16)Change of Practice of Opposition ExaminationThe Omani Trademarks Office has started to implement section 36 / article 09/3 of Omani Intellectual Property Law No.67/2008 which stipulates the following:
(9) The prior user of a mark which is not in the Register or which is not subject to a pending application under Subsection (2)(vi), may oppose an application for a registration by another person of a similar or identical mark for similar or identical goods, in accordance with this Section and the Regulations thereto, provided he:
(iii) he files an application for registration of his own mark prior to sending the Registrar the notice of opposition.
In the past, the Omani Trademarks Office was not taking into consideration this Article when examining Opposition cases, however, the Office has now started rejecting any opposition formally being not complied with the above Law.
Source: JAH & Co. IP, Qatar Dec 08, 2015 (Newsletter Issue 19/15)
Changes on Law on IP Institutions and Procedures in Effect Soon
The new Law on Industrial Property Institutions and Procedures which was passed on July 2, 2015 will take effect on January 1, 2016.
Unified procedures for all industrial property objects have been introduced and a quicker and more effective dispute resolution process has been created. Further, the law is expected to improve the protection of the industrial property objects. It will also pave the way to a new body – the Board of Appeals (BoA) for Industrial Property.
There are several changes in relation to professional representatives in the new law. One is the abolition of the requirement to issue a power of attorney to professional representatives. In addition, professional representatives will be required to insure their professional activity.
Source: METIDA, Latvia and Eversheds, Latvia
Dec 08, 2015 (Newsletter Issue 19/15)New Administrative Rules for Well-Known TrademarksOn October 13, 2015, new administrative rules on declaring trademarks well known entered into force in Russia.
The main change concerns the prescribed time limit for the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) to determine whether a trademark is well known. While there used to be no time limit, under the new rules, this term is maximum 10 months from the date of application for recognition of a well-known mark through administrative proceedings.
Source: www.petosevic.com Dec 08, 2015 (Newsletter Issue 19/15)Official Fees Be Increased SoonThe Turkish Ministry of Finance has announced verbally that the official fees for most intellectual property transactions will be raised at various rates.
The said decision is likely to be effective as from January 1, 2016. This increase will affect all trademark, patent, and industrial design applications filed after said date as well as retroactively for pending applications.
Source: JAH & Co. IP, Qatar Dec 08, 2015 (Newsletter Issue 19/15)Online Trademark Filing/Renewal Services The Ministry of Economy at the United Arab Emirates announced the launch of an online trademark filing and renewal service by the Department of Trademarks as of December 6, 2015.
The service will assist local agents in UAE in filing new trademarks and renew their applications online.
Source: JAH & Co. IP, Qatar
Dec 08, 2015 (Newsletter Issue 19/15)Draft on Trade Mark (Amendment) Rules IssuedThe Indian Ministry of Commerce and Industry (MCI) has recently issued the draft Trade Mark (Amendment) Rules. The MCI has invited comments from the IP fraternity and general public before finalizing the said amendments to the Trade Mark Rules, 2002. Some of the key highlights of the proposed amendments are listed below.
- Increase of official trademark fees
- Inclusion in well known marks list
- Requirement of statement of use
- Expedited examination process
- Expedited opposition process
- Consolidation of forms
- and more
For further information please check the article of our Country Index partner Chadha & Chadha IP here
Source: Chadha & Chadha IP, India
Dec 08, 2015 (Newsletter Issue 19/15)Change in Practice of Custom Manufacturing of ProductsThe Swiss Federal Institute of Intellectual Property has announced on its website that it will change its practice in relation to "custom manufacturing of products". This service will be accepted in Class 40 of the Nice classification under certain conditions as per January 1, 2016 and it will be applied on all pending applications.
For further information please check here (in German only)
Source: www.ige.ch Dec 08, 2015 (Newsletter Issue 19/15)Infringement Cases by Office Now ReceivedThe Directorate of Industrial Property informs by an official circular that the office is open to receive infringement cases with regards to trademarks, design and patent protected within the Kingdom of Bahrain.
The complaint is filed at the Industrial Property Control Section within the Directorate of Industrial Property. The complaint needs to be accompanied with the following:
1. A power of attorney with an Apostille certification if the country of the applicant company is a member of the Hague Convention; otherwise the power of attorney should be legalized up to an Bahraini consulate abroad.
2. Copy of the registration certificate of the trademark/design/patent in Bahrain which has been infringed.
3. Copies and samples of client and infringed mark/design/patent.
The representative of the complainant can assist the inspectors to allocate the infringed products and premises.
Source: JAH & Co. IP, Qatar Dec 08, 2015 (Newsletter Issue 19/15)
Last Deadline to Renew Lapsed Trademarks
The Registrar of the Libyan Trademarks office confirmed that it would be possible to lodge renewal applications in respect of expired trademarks, regardless to their expiry date, until December 31, 2015. After said date, all expired (lapsed) trademarks will be treated as cancelled.
It is possible to issue registration certificates for expired applications after paying the normal renewal fee as well as paying the registration fee simultaneously.
Applicants who want to submit renewal applications or obtain registration certificates are required to provide specimen of the mark, the filing number, the filing date, the applicant details as well as the classes and list of goods. No other documents are needed.
Source: NJQ & Associates
Nov 25, 2015 (Newsletter Issue 18/15)Official Fees Soon IncreasedThe Ministry of Commerce and Industry, Patents and Trademarks in Kuwait has verbally announced that the official fees for trademarks registration will be increased dramatically. The said decision is likely to be effective as from December 21, 2015.
The Trademarks Registrar will apply the new fees for all trademark/patent/design matters filed subsequent to said date as well as retroactively for pending trademark applications as regards their publication and registration.
The current fees of filing and registration (including publication) of a trademark is USD 24 and USD 58 respectively; the new fees is expected to be USD 264 for filing and USD 1,586 for publication and registration.
Source: JAH & Co. IP, Qatar Nov 25, 2015 (Newsletter Issue 18/15)
New USPTO Regional Office Opened
The USPTO announced that a new Regional United States Patent and Trademark Office has been opened in Texas. The new office is located in the Terminal Annex Federal Building in Dallas.
It will provide outreach services for inventors and entrepreneurs in Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma, Tennessee and Texas. Further, the office will assist the USPTO in fostering and protecting innovation.
Services will be readily accessible to all applicants and the office will serve as a hub of education and outreach to the Southwest region.
Source: www.uspto.gov
Nov 25, 2015 (Newsletter Issue 18/15)
Notice on Trademark Dispute Examination Procedures
The Taiwan Trademark Office (TIPO) announced on its website the “Notice on Trademark Dispute Examination Procedures” in order to accelerate the examination process of trademark dispute cases. TIPO stipulated the Notice to improve the examination procedures based on the situations commonly seen to delay the process in real practices.
The improvement measures include directly entering into the substantive examination phase ex officio without going through the procedure of Cross-examination and hearing. The Notice comprises matters relating to shortened examination time and effective management.
The related information was posted onto TIPO’s website on September 1, 2015.
Source: www.tipo.gov.tw
Nov 25, 2015 (Newsletter Issue 18/15)
IP Cases for WIPO Mediation Accepted
The Intellectual Property Office of the Philippines (IPOPHL) is now offering WIPO Mediation for disputes pending before the IPOPHL. In accordance with a Memorandum of Understanding, the IPOPHL and the World Intellectual Property Organization (WIPO) have established a joint dispute resolution procedure for the referral of intellectual property (IP) disputes to the WIPO Arbitration and Mediation Center (WIPO Center).
All cases filed in the IPOPHL primarily involving one or more parties domiciled outside the Philippines can now avail of the WIPO Mediation, specifically:
- Administrative complaints for violation of intellectual property rights (IPV) and/or unfair competition
- Inter partes cases (IPC)
- Disputes involving technology transfer payments
- Disputes relating to the terms of a license involving the author's rights to public
- performance or other communication of his work
- Cases appealed to the Office of the Director General (ODG) from decisions of the Bureau of Legal Affairs (BLA) and the Documentation, Information and Technology Transfer Bureau (DITTB)
- All other cases which may be referred to mediation during the settlement period declared by the Director General
The WIPO Mediation option offered by IPOPHL may be especially advantageous for international parties or parties seeking to settle related disputes in multiple jurisdictions.
Source: www.ipophil.gov.ph
Nov 25, 2015 (Newsletter Issue 18/15)E-Filing for Renewal of Trademarks Possible NowOn September 28, 2015, the Directorate General of Intellectual Property (DGIP) officially launched the online application for the renewal of registered trademarks.
The online application shortens the renewal process from the current period of at least 1 year to a maximum of 14 working days. Not only does this online application reduce the time taken to submit and process the trademark renewal, but it also simplifies the entire process. It is done in an efficient step-by-step manner that begins with filling in the online form and uploading the relevant supporting documents. This is then followed by the receipt of the billing code for payment, which must be settled within 3 days.
The online application can be accessed here.
Source: KASS International Sdn Bhd, Malaysia Nov 25, 2015 (Newsletter Issue 18/15)
Electronic Certificates for TMs Available Now
IP Australia announced the introduction of electronic certificates for trademarks via the electronic channel.
Electronic channel customer will receive their trademark certificates electronically. Non-electronic channel customers will receive a printed copy of their certificates on plain paper. The Commissioner’s name and signature will no longer appear on the certificates.
The Australian Trade Mark Register will continue to be the authoritative source on the validity of your IP right. A note to this effect will appear in the footer of the certificate.
There is no fee associated with issuing of electronic certificates.
Source: www.ipaustralia.gov.au
Nov 25, 2015 (Newsletter Issue 18/15)Amendments to Industrial Property Law On July 24, 2015, the Polish Parliament adopted an act amending the Polish Act on Industrial Property Law dated June 30, 2000. The amendments include changes in regulations concerning trademarks, industrial designs and patents.
Key changes in trademark law are for example that the changes extend the possibility of obtaining a joint right of protection for a trademark by introducing the possibility to grant in the name of each entity.
Another significant change is introducing the institution of “letters of consent”. Once it is in force, the Patent Office will be able to apply a legislative provision in a statutory manner and accept letters of consent in all the cases involving collision of a trademark with prior rights held by third parties.
Please see the article of Ms Monika Witkowska of the law firm Kulikowska & Kulikowski for further information here
The full text of the amended act can be seen in the original language here
Source: Kulikowska & Kulikowski, Poland
Nov 11, 2015 (Newsletter Issue 17/15)Trademark Registration Certificates Issued The Libyan Trademarks office has started issuing trademark registration certificates after civil unrest.
Source: JAH & Co. IP, Qatar Nov 11, 2015 (Newsletter Issue 17/15)Trademark Manual of Examining Procedure UpdatedOn October 30, 2015, the USPTO issued the October 2015 Trademark Manual of Examining Procedure (TMEP), which incorporates USPTO trademark practice and relevant case law reported prior to October 1, 2015.
The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
More information on the October 2015 TMEP Highlights can be seen here
Source: www.uspto.gov Nov 11, 2015 (Newsletter Issue 17/15)
Declaration to WIPO Deposited
On October 7, 2015, Zimbabwe has deposited the declaration to extend the period within which it must reject international trade mark oppositions if they are not to be automatically allowed. The period will extend from 12 to 18 months under Article 5(2) of the Protocol.
Further, Zimbabwe wants in connection with each international registration in which it is mentioned and in connection with the renewal of any such international registration an individual fee instead of a share in the revenue produced by the supplementary and complementary fees.
The said declaration will enter into force on January 7, 2016.
Source: www.wipo.int
Nov 11, 2015 (Newsletter Issue 17/15)Implementation of Trademarks Act PostponedThe Canadian Trademarks Office recently announced that the amendments to the Trademarks Act will not come into force until at least the beginning of 2018. It was initially believed that the amendments would be earlier.
Under the current Act, applicants need to file a Declaration of Use when they file an application on a basis of proposed use in order to obtain their certificate of registration. The new Act will eliminate this requirement. In the event that the Declaration of Use has not been filed yet, an extension of time needs to be requested until the new law comes into force.
For further information please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here
Source: Joli-Coeur Lacasse Avocats, Canada
Nov 11, 2015 (Newsletter Issue 17/15)E-Filing in Sint Maarten Available NowThe Bureau for Intellectual Property of Sint Maarten (BIP SXM) in cooperation with the Benelux Office for Intellectual Property (BOIP) has opened for business on-line on Monday, October 5, 2015.
The Bureau for Intellectual Property of Curaçao will no longer handle or process any requests received on or after October 1, 2015 concerning Sint Maarten.
Applications, requests for renewal and other requests concerning Sint Maarten trademarks received between October 1st and October 5th will be given the time of their actual receipt and will be processed accordingly.
A trademark representative has to be recognized by BIP SXM who will publish a list on their website of all Sint Maarten trademark representatives registered at the Bureau. The registration form for the representatives can be found here
Further, a list of the applicable fees, as per October 1st, 2015, of the Bureau for Intellectual Property Sint Maarten, can be found here
Source: www.bip.sx Nov 11, 2015 (Newsletter Issue 17/15)
Declaration of Intention to Use when Designating Mozambique
Mozambique has notified WIPO that it requires a declaration of intention to use the mark when designating Mozambique under the Madrid Protocol concerning the international registration.
Amendments to the footnote of the official forms will be modified to indicate that the applicant or holder declares that he has the intention that the mark will be used by him or with his consent in Mozambique in connection with the goods and services identified in the international application or subsequent designation concerned.
The notification made by Mozambique entered into force three months after its receipt by the Director General of WIPO, namely on November 5, 2015.
Source: www.wipo.int
Oct 28, 2015 (Newsletter Issue 16/15)Official Filing Fees DecreasedOn October 9, 2015, the China Trademark Office announced that as from October 15, 2015, the official fees for filing a national application per mark per class will be CNY 600 lowered from current CNY 800 if the designated goods or services are within the basic ten, and each additional item in excess of the basic then will incur official fee of CNY 60 lowered from current CNY 80.
Source: Peksung Intellectual Property Ltd., China Oct 28, 2015 (Newsletter Issue 16/15)
Trademark E-Filing Implemented
The Portuguese Institute of Intellectual Property (INPIPT) has implemented the service for e-filing for trade marks. The system allows INPIPT's users to file their trade mark applications electronically.
Source: www.tmdn.org
Oct 28, 2015 (Newsletter Issue 16/15)
Design E-Filing and E-Services Now Possible
The Swedish Patent and Registration Office (PRV) has implemented Design e-filing and e-services, two components of the Software Package project developed by the Cooperation Fund.
These two integrations complete an entirely new front office system for PRV, offering a full electronic filing experience for PRV users.
Source: www.tmdn.org
Oct 28, 2015 (Newsletter Issue 16/15)
Law Regulates Labeling of Food Products
The Chilean Ministry of Health recently passed a decree regarding the labeling of the nutritional compositions of food products. The new regulation aims at targeting food products that are intended for consumption by children under 14 years of age if they exceed specified limits of sodium, sugar, calories and saturated fats.
The new law, which will be in force from June 2016, will implement the use of warning messages and a graphic design on food labels to show that the aforementioned food components are above the established recommended limits. A warning message reading “High in” inside a black octagonal shape will have to be placed on the front of the food packaging, thus making them highly visible to consumers.
This decision has been criticized by the International Trademark Association (INTA) in a document recently submitted to the Chilean National Institute of Industrial Property (INAPI) commenting the National Intellectual Property Strategy for Chile.
In this document, INTA states that the new law “prohibits customers from distinguishing one set of products from another set of products, reduces the freedom of choice, and expropriates valuable trademark rights without due process.” INTA added that “reducing the ability to use trademarks due to the condensed space on packaging violates various international treaties on trademark protection,” such as the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), in particular Article 20 which states that “the use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements such as … use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings.”
Source: www.moellerip.com
Sep 29, 2015 (Newsletter Issue 15/15)
Digitisation of Trademark Records
The Nigerian Registry of Trademarks, Patents & Designs recently issued an important notice dealing with their data capture project. According to the notice, the long-overdue digitisation of the Nigerian trade mark database will start on October 1, 2015, despite a number of ‘false starts’.
The World Intellectual Property Organisation (WIPO) is involved in the process, and a company called Trigyn Technologies has been appointed as the IT service provider.
According to the notice, the aims of the project are wide-ranging. It is hoped that the project will ‘modernise and accelerate work process and service delivery’, increase ‘the credibility of documents issued by the Registrar’, ‘facilitate the conduct of electronic searches’, and ‘boost the confidence of investors in the Nigerian economy.’ The notice ‘implores’ all trade mark owners and IP agents to ‘demonstrate understanding and co-operation while the process lasts, and to ensure that all their records with the Registry are promptly updated and/or renewed on /or before September 28, 2015.’
It is unclear exactly what ‘updating’ the Registry has in mind. It is assumed that there is nothing that trade mark owners need to do at this stage.
Further, it can be reported that the Nigerian Registrar stated in a recent meeting the following:
- Trade mark acceptance notices will in future be issued within one month of filing. This will apply to all applications, including those for marks for which product approvals or registrations are required under the National Agency for Food & Drug Control (NAFDAC), such as applications in classes 1, 3, 4, 5, 10, 29, 30, 32 and 33.
- Trade mark journals will in future be issued more frequently.
- The Registry will look into the possibility of speeding up the issuance of certificates of registration, as it is aware of the fact that fake certificates are sometimes issued because of the delays.
Source: Spoor & Fisher, South Africa
Sep 29, 2015 (Newsletter Issue 15/15)IP Bureau of Sint Maarten Starts SoonThe Bureau for Intellectual Property of Sint Maarten (BIP SXM) starts soon. The National Ordinance BIP is planned to go into effect as per October 1, 2015. As from this day, entrepreneurs active on Sint Maarten can protect their national as well as their international trademarks via a electronic procedure. Trademark representatives on Sint Maarten can register before October 1, 2015, at BIP SXM via the form on the website.
In addition to the registration system, there is a fully online trademarks register available for Sint Maarten. This register will provide real-time information regarding the current trademark rights on Sint Maarten and facilitate the procedure for acquiring rights quickly and efficiently.
The BOIP will take care of the back-office activities. For its part, the BIP SXM will be responsible for the execution of the legal tasks from the Trademarks Ordinance and disseminating information to the public. With these activities, the BOIP has further expanded its network of international partnerships. Since 2010, it has already been charged with the execution of the Trademarks Act for Bonaire, Sint Eustatius and Saba (Wet Merken BES, or WMB) on behalf of the Department of the Caribbean Netherlands (Rijksdienst Caribisch Nederland). The Act applies to the three special Dutch “municipalities” of Bonaire, Sint Eustatius and Saba, which are jointly referred to as the Caribbean Netherlands.
Source: www.boip.int Sep 29, 2015 (Newsletter Issue 15/15)
Trademark Related Regulations Amended
The Taiwan Trademark Office announced on its website that the Article 11 of Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means has been amended on July 13, 2015 to comply with deletion of Article 4.2 of Enforcement Rules of the Trademark Act requiring that the applicant be exempted from submitting the original copy of proof for rights of priority and exhibition priority. What follows is the text of the amended Article 11.
Article 11
The documents of proof to be submitted in an electronic trademark application may be replaced with the electronic version thereof prescribed by the Registrar Office, except for the original, the certified copy, or evidence submitted pursuant to the Act or the Enforcement Rules of the Act.
For the documents of proof submitted in electronic form pursuant to Paragraph 1, preliminary showing shall be made that the electronic files are identical to the original or the certified copy.
Whenever it deems necessary, the Registrar Office may require the user to submit the original or the certified copy of the electronic files prescribed under Paragraph 1 for verification.
Source: www.tipo.gov.tw
Sep 29, 2015 (Newsletter Issue 15/15)
Trademark E-Filing Implemented
The Hungarian Intellectual Property Office (HIPO) has implemented trademark e-filing.
The trade mark e-filing system, part of the Software Package of services developed under the Cooperation Fund, allows Hungarian users to file their trade mark applications electronically.
Source: www.tmdn.org
Sep 29, 2015 (Newsletter Issue 15/15)New Interactive Forms for Trademark/Industrial Design ApplicationsThe Polish Patent Office provides two new interactive forms to facilitate the generation of applications for registration of trademarks and industrial designs. These services are available on the website of the Polish Patent Office as well as in the Online Service Portal. However, the new interactive forms are not active yet.
Interactive forms have a range of functional features enabling a smooth and orderly completion of applications for registration, including inter alia transparent breakdown into kinds of marks, hints to draft the list of goods or facilitated enclosure and visualization of graphics in a PDF file.
After completing the form, it is possible to generate a file with a summary of the application and/or to save this data on a local disk for later use (e.g. to complete the application or facilitate completion of further applications at a later date).
Source: Kulikowska & Kulikowski, Poland
Sep 29, 2015 (Newsletter Issue 15/15)Increase of Official Fees ExpectedIt is expected that the official fees for the publication of renewals and recordal of assignments in Saudi Arabia will be increased from 15 October 2015.
Please be advised that the old fees of said publication of assignments were SAR 500 and for renewals SAR 300. The new fees is expected to be SAR 3000 for both.
Source: JAH & Co. IP, Qatar Sep 29, 2015 (Newsletter Issue 15/15)Modernization of IP framework in ProgressCIPO published on its website how the trademark landscape is changing. The intellectual property laws are being modernized, including the Trade-Marks Act. Specifically, Bill C-8 — Combating Counterfeit Products Act, Bill C-31 — Budget Implementation Act 2014 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and more recently Bill C-59 — Budget Implementation Act 2015, which will allow Canada to be better aligned with international practices.
Further, starting from September 28, 2015, CIPO will begin to accept trademarks applications voluntarily filed with their goods and services grouped and classed according to the Nice Classification. Using the Nice classification at CIPO will be optional and non-mandatory until the coming into force of C-31.
For further information on the Nice classification please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here
Check further information on Trademarks legislative changes and international treaties and Update to the trademarks online tools.
Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada Sep 15, 2015 (Newsletter Issue 14/15)
Process for Design Applications Improved
The Benelux Office for Intellectual Property (BOIP) will use a new internal system starting September 3, 2015 for the processing of design applications. This new system will speed up the registration proceedings.
Important modifications are:
- Registration certificates for designs will no longer be sent. A copy of the registered design can be printed out through the online register. This copy will have the same legal status as a copy issued by BOIP.
- The Benelux Designs Register has been the official publication medium for drawings and designs since July 2015. From September drawings or designs will be published daily in the register.
Source: www.boip.int
Sep 15, 2015 (Newsletter Issue 14/15)
Changes to Procedures of Trademarks/Services
The Decree No. 2015-303 of June 1, 2015, establishing the Procedures for the Registration of and Opposition to the Registration of Trademarks and Service Marks, as well as the Procedures concerning Recording in the National Register of Marks came into force on June 9, 2015, and repealed Decree No. 2001-1603 of July 11, 2001.
The Decree introduces the following modifications:
(i) introduction of electronic filing of applications for the registration of trademarks;
(ii) setting out of provisions governing the trademark registration through the Madrid Protocol;
(iii) extension during the opposition period of the time for the applicant to submit observations from 45 days to 2 months from the date of notification of the opposition;
(iv) fixation of a maximum period of 8 months from the date of submission of observations for the applicant and the opponent to attempt conciliation in the trademark opposition;
(v) extension to 2 months from 1 month of the period during which the opponent may furnish proof of the use of the trademarks upon which opposition has been based; and
(vi) definition of a period of 2 months for the applicant to submit the missing documents to request recording of a change of names, addresses, ownership, assignment, etc., in the National Register of Marks.
Source: www.wipo.int
Sep 15, 2015 (Newsletter Issue 14/15)
New System for Trademarks Protection Launched
The Ministry of Supply and Internal Trade of Egypt announced the launch of a new system for activating protection of trademark in Egypt.
This new system is one of different initiatives adopted by the Ministry to enhance the confidence in the national economy, and protect the consumers, investors and producers rights.
The new system aims to protect the Egyptian consumers against counterfeit, imitated and expired products. On the other hand, it will protect the investors from having their trademarks counterfeit or plagiarized.
It is worth mentioning that the new system will be implemented starting from September 2015, through a special electronic system allowing the consumer to obtain information about the expiry date of products they buy, and whether such products are original or not.
In this regard, a stringent punishment shall be applied in case of selling counterfeit products; up to a one-year imprisonment or a fine of L.E 50.000.
Source: www.agip.com
Sep 15, 2015 (Newsletter Issue 14/15)Amended Terms and IP Related Fees IncreasedThe Sindh Finance Act 2015 has made some amendments to various statutes including the Sindh Sales Tax on Services Act, 2011. The following terms have been defined therein:
(54A) “intellectual property right” means and includes any right of intangible property, anything produced by the mind, trade mark, patent, design including industrial design, layout design (topographies) of integrated circuits, copyright or any other similar intangible property as defined in clause (g) of section 2 of the Intellectual Property Organization of Pakistan Act, 2012 (Act No. XXII of 2012) and covered by the Intellectual Property Laws specified in clause (h) of section 2 thereof or under any other law for the time being in force;
(54B) “intellectual property service” means any service provided or rendered to a person by any person by transferring temporarily or permitting the use or enjoyment of an intellectual property right.
Further, the Sindh Revenue Board (SRB) of Pakistan has issued a notification stipulating that 10% sales tax will be added on all Intellectual Property services offered in Pakistan.
Source: Vellani & Vellani, Pakistan and www.agip.com Sep 15, 2015 (Newsletter Issue 14/15)Payment of Renewal Fees RestructuredThe National Direction of Intellectual Property (DINAPI) of Paraguay has issued a new circular No. 07/2015 to restructure the process of payment of fees for trademarks renewals and the improvement of their legal services.
The new circular No. 07/2015 establishes that the official fees for renewal applications must be paid from the time of the renewal application filling until the expiration date of the trademark, if the renewal application is filed on day after its expiration date a penalty for late submission will be assigned.
This means that the rate of 10 minimum wages must be paid before the expiration of the trademark.
Source: www.brlatina.com and Berkemeyer Attorneys and Counselors, Paraguay Sep 15, 2015 (Newsletter Issue 14/15)Clarification on Designs Act/Public Notice for AgentsOn August 20, 2015, the Indian Patent Office published on its website clarification regarding Section 5(3) of the Designs Act, 2002 and a public notice for Trade Marks Agent Exam-2015.
For further information, please check the clarification regarding Section 5(3) of the Designs Act, 2002 here and the public notice for Trade Marks Agent Exam-2015 here
Source: www.ipindia.nic.in Sep 15, 2015 (Newsletter Issue 14/15)Law on IP Institutions and Procedures AmendedLativia passed a new Law on Industrial Property Institutions and Procedures on July 2, 2015.
Unified procedures for all industrial property objects have been introduced and a quicker and more effective dispute resolution process has been created. The law is expected to improve the protection of the industrial property objects. It will also pave the way to a new body – the Board of Appeals (BoA) for Industrial Property.
The most important changes concern opposition and appeal procedures before the Board of Appeals, namely:
1) Written process is stated as mandatory, but oral proceeding will be also possible on following conditions:
- Board of Appeals required
- Upon request of one of parties and
- Additional fee for oral proceeding should be paid (amount is not provided yet).
2) Motivated reply to oppositions should be filed within 2 months instead of current 3 months time period.
3) All decisions of BoA could be appealed in accordance with Civil procedure provisions before the Riga Court of Vidzeme district within 3 months (amount is not provided yet).
The Law on Industrial Property Institutions and Procedures will take effect on January 1, 2016.
For further information, please see the article of Ms Jevgenija Gainutdinova from METIDA here
Source: METIDA, Latvia Sep 02, 2015 (Newsletter Issue 13/15)
Joins Madrid Protocol
On July 31, 2015, the Government of the People’s Democratic Republic of Algeria deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Protocol will enter into force with respect to Algeria on October 31, 2015.
The Protocol gives trademark owners the possibility of filing International Registration of Marks. It also benefits brand owners from Algeria, by gaining full access to the territories covered by the Madrid Protocol for international trademark protection.
Source: www.wipo.int
Sep 02, 2015 (Newsletter Issue 13/15)
Free Access to Trademark Applications Database
The Ukrainian Institute of Intellectual Property granted free access to its online database of trademark applications on August 21, 2015.
Even though the database only contains applications that passed the formal examination since August 20, 2015, trademark owners will be able to monitor new applications and daily updates, ensuring timely enforcement of their prior rights.
Source: www.petosevic.com
Sep 02, 2015 (Newsletter Issue 13/15)Applications Accepted in the Name of IndividualsThe Omani Trademarks Registrar has verbally declared new directives to allow the registration of trademarks in the name of individuals. Therefore, it is possible to obtain registration of trademarks in the name of individuals on the basis of submission of a Trade License or Commercial Register or Certificate of Incorporation of any company wherein the name of the individual is listed therein as a partner or manager. In addition to the aforesaid document a power of attorney in the name of the individual applicant with an apostille attestation is also needed.
In the past and prior to the above, registration of trademarks in the name of individuals was prohibited for a period of time.
Source: JAH & Co. IP, Qatar Sep 02, 2015 (Newsletter Issue 13/15)
Design Law Amended Soon
A proposed Design Law has been drafted on July 6, 2015, and needs to undergo three readings in the Knesset.
Some of the amendments are listed below:
- The new design law does not only cover the design of physical objects of manufacture, but also the design of fonts and of computer icons and the like.
- The previous law related to registered designs only. The new law offers protection for up to three years for non-registered designs, considered suitable for clothing fashions and other trends having limited shelf-life. This proposal will bring Israel into line with Europe where non-registered designs have limited protection. It is proposed that fonts, even if non-registered, will be entitled to up to 25 years of protection.
- Currently, designs may be protected for up to 15 years. The proposed amendment will extend this period to 25 years, in line with Europe.
- If a design is marketed in Israel as a non-registered design, it may, within 12 months, be registered.
- The proposed Law adopts the Locarno Agreement Establishing an International Classification for Industrial Designs Signed at Locarno on October 8, 1968
- The proposed law requires absolute international novelty and significant differences from other designs.
Once the Law is passed, Israel may be able to join the Hague system for international design registration.
Source: IP Factor, Israel
Sep 02, 2015 (Newsletter Issue 13/15)
Official Fees Increased
The Patent Office in Argentina has increased the official fees. According to Resolution 165/2015, published in the Official Bulletin on July 31, 2015, the official fees for services provided by the Argentine PTO have been increased by an average of 15 percent as from August 10, 2015. An additional similar increase will take effect in October 2015.
As from August, the official trademark filing fee will be ARS 690 per class and from October ARS 760.
Source: www.inpi.gov.ar
Sep 02, 2015 (Newsletter Issue 13/15)
Several IP Legislative Acts Amended
The State Agency on Intellectual Property announced on its website that amendments and additions to certain legislative acts in the field of intellectual property have been adopted in the Republic of Moldova on July 30, 2015, namely:
- Law No. 38-XVI of 29 February 2008 on the Protection of Trademarks;
- Law No.161-XVI of 12 July 2007 on the Protection of Industrial Designs;
- Law No. 39-XVI of 29 February 2008 on the Protection of Plant Varieties
The Law on Protection of Trademarks has been amended. It is now possible to register holograms, position, smell, touch and sound designations as a trademark. Also, amendments have been made concerning absolute and relative grounds for refusal, limitation of the exclusive right, rejection of the trade mark registration application and renewal of trademark registration, etc.
Further, the Law on the Protection of Industrial Designs has been amended. Some procedural aspects, in particular, concerning the filing of ID registration application, examination, withdrawal and renewal of registration has been modified.
Also, the Law on the Protection of Plant Varieties has been adjusted. In particular, the limitation of the right to the plant variety patent, use of the variety denomination and its amendment.
Source: www.agepi.md
Sep 02, 2015 (Newsletter Issue 13/15)
Accession to WTO
WTO members formally adopted Kazakhstan’s WTO terms of entry at the General Council meeting on July 27, 2015, in the presence of Kazakhstan’s President Nursultan Nazarbayev.
Kazakhstan will have until October 31, 2015 to ratify the deal to formally become a WTO member 30 days after it notifies the ratification to the WTO Director-General.
Source: www.wto.org
Sep 02, 2015 (Newsletter Issue 13/15)Industrial Design Law AmendedThe Law on Amendments to the Law on Legal Protection of Industrial Design, which came into force in Serbia on May 30, 2015, aims to further harmonize Serbian legislation with the EU and bring it in line with Directives 98/71/EC and 2004/48/EC.
For further information on amendments, please check here
Source: www.petosevic.com Sep 02, 2015 (Newsletter Issue 13/15)
New Trade Marks Act Now Effective in British Virgin Islands
The Trade Marks Act, 2013 came into force in the British Virgin Islands on September 1, 2015. The new Act replaces the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946.
There are several additional features of the new law. Most significantly, it will abolish the dual filing system. It will no longer be possible to register marks in the British Virgin Islands on the basis of an existing United Kingdom registration.
The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)
Transitional provisions:
- Independent and UK-based registrations filed before September 1, 2015, will remain valid under the new law
- Independent and UK-based applications which were pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)
Further, a new scale of official fees has been introduced.
Source: Spoor & Fisher, South Africa/Channel Islands
Jul 28, 2015 (Newsletter Issue 12/15)New Trade Marks Act in Cayman Islands SoonA new Trade Marks Act is in the process of being finalized in the Cayman Islands. It is anticipated that the new law will be passed and implemented by September 2015.
The new law will make it possible for trade mark proprietors to file for trade mark protection in the Cayman Islands directly. Currently, it is only possible for proprietors to gain trade mark protection in the Cayman Islands by way of an application to extend an existing UK or Community trade mark registration. This can be a costly and time consuming process, particularly for proprietors who have no desire or need to maintain trade marks in the UK and/or EU.
The new law provides for a full examination and opposition process, as well as modern trade mark infringement provisions and effective remedies.
Source: HSM IP, Cayman Islands Jul 28, 2015 (Newsletter Issue 12/15)New Laws SoonAfter considering the Trade Marks Bill, 2014 in April of this year, the Senate of Trinidad & Tobago assented to the Trade Marks Act, 2015 on June 12, 2015. The remaining step to bring the new Act into effect is a proclamation, which will likely happen after completion of companion regulations. This new act will replace the existing Trade Marks Act, Chap. 82:81
Perhaps most notably, the act allows the Minister in charge of intellectual property to make regulations giving effect to the provisions of the Madrid Protocol. This positions Trinidad to become one of the few Commonwealth Caribbean countries to implement Madrid – the only other country having done so thus far being Antigua & Barbuda. Implementation of Madrid may be an exciting prospect to many trademark applicants, as it allows for simplified filing across multiple jurisdictions simultaneously. However, some countries have taken to issuing regular provisional refusals, and it is possible that the Intellectual Property Office in Trinidad will follow suit. The Registry in Antigua & Barbuda regularly issues provisional refusals to international applications which must be dealt with individually and on a local basis.
Another important change for mark owners is that the new act will implement the most recent version of the Nice Classification system. At present, Trinidad still follows the Seventh Edition of the Nice Classification, which only protects goods and services up to Class 42. Bringing the most current version of Nice into effect will be an exciting change for trademark owners, as they will be able to better protect their goods and services of interest.
Source: Caribbean IP, USA Jul 28, 2015 (Newsletter Issue 12/15)New Regulations on IP internal ProceduresThe Bolivian PTO (SENAPI) launched a new version of its regulations on intellectual property internal regulations, which is in force since July 1, 2015.
SENAPI identified some legal vacuums and dispositions contrary to the Decision 486 which establishes the common IP regime for Andean Community members and the Administrative Procedure Law in the former regulations of February 11, 2008.
The new regulations aim to complete and correct the deficiencies found in the former regulations by including definitions, concepts and requirements established in the jurisprudence of the Andean Court of Justice.
Therefore, aspects that were not previously regulated related to trademarks (i.e. oppositions, cancellations, nullity actions, as well as collective, certification and well-known trademarks), patents (i.e. amendments, divisional applications, oppositions, nullity actions, compulsory licenses, and expiration date), utility models, industrial designs, layout-designs of integrated circuits, geographic indications and denominations of origin, are now regulated in the current document.
To access the new regulations on IP internal procedures here (only in Spanish available).
Source: Moeller IP Advisors, Argentina; www.senapi.gob.bo Jul 28, 2015 (Newsletter Issue 12/15)New Online Integrated Information PlatformThe recent introduction of the Intellectual Property Right (IPR) Data and Information Service System or “Layanan Data dan Informasi Hak Kekayaan Intelektual (LADI HKI)” has taken Indonesia’s Director General of Intellectual Property (DGIP) one step forward in serving IPR owners and their agents alike.
It is a new online integrated information platform for retrieving data on trademark, patent and industrial design applications in Indonesia. Currently it is available in one language: Bahasa Indonesia. The following information can be accessed:
Trademark: Information can be filtered by category, i.e., all kinds of marks, trademarks, collective marks, service marks, and renewed marks; or based on the status of application, i.e., expired, pending, cancelled, registered, deleted, withdrawn, and rejected marks.
Patent: Information can be filtered by category, i.e., all types of patents, patents and simple patent (utility model/innovation); or based on the status of application, i.e., rejected, granted, cancelled, pending and lapsed patents.
Industrial Design: Information in this section is filtered based on the status of the application, i.e., registered, pending, expired, cancelled, withdrawn, and rejected.
While the platform currently performs its tasks adequately, it has been noted by the contributor of the news that certain recent applications particularly for trademark are not covered yet.
To access the platform please click here.
Source: KASS International Sdn Bhd, Malaysia Jul 28, 2015 (Newsletter Issue 12/15)
Renewal of CIPO's Online Applications Soon
At the end of July and end of August, the Canadian Intellectual Property Office (CIPO) will release revamped online applications as part of a series of planned improvements to modernize the online services.
The applications will be accessible to a wider range of people, easier to use, and will be optimized for mobile devices. While some applications are only being updated to a new look-and-feel, the following applications will go through more extensive improvements:
- Trademarks (Request to Enter a New Name on the List of Trademark Agents)
- Copyright (Filing a grant of interest, Request a certificate of correction, General Correspondence)
- Industrial Designs (Industrial Design E-Filing, General Correspondence)
- Patents (Filing Canadian Patent Applications, The Canadian Patent Office Record (CPOR), General Correspondence)
The Client Service Centre information officers are available Monday to Friday, from 8:30 a.m. to 5 p.m. (local time) to answer questions during the transition period.
Source: www.ic.gc.ca
Jul 28, 2015 (Newsletter Issue 12/15)
Communist and Nazi Symbols Banned
A new law condemning the Communist and Nazi regimes and prohibiting all related symbols and propaganda entered into force in Ukraine on May 21, 2015. Several articles of the Ukrainian Law on Protection of Rights to Marks for Goods and Services have been amended in accordance with the new law.
Points 1 and 2 of Article 5 (Conditions for Granting Legal Protection) were amended:
1. Legal protection shall be granted to a mark that does not contradict the public order, principles of humanity and morality, the Ukrainian Law “On condemning the Communist and National Socialist (Nazi) totalitarian regimes in Ukraine and prohibiting the propaganda of their symbols”, and is not subject to the grounds for the refusal of legal protection as established by the present law.
2. Trademark may consist of any sign or any combination of signs, such as words, including personal names, letters, numerals, pictorial elements, colors and combinations of colors, as well as any combination of such signs. Trademark cannot contain the following: any name or pseudonym of a person holding senior position within the Communist Party, starting from the secretary position of a district committee and higher; the Union of Soviet Socialist Republics (USSR) and the Ukrainian Soviet Socialist Republic highest bodies of power and administration; other Soviet Union republics and autonomous Soviet republics (except in cases related to the development of the Ukrainian science and culture), who used to work for the Soviet state security bodies; the names of the USSR, the Ukrainian SSR, other Soviet republics and their derivatives; denominations associated with the Communist Party activities and its establishment on the territory of Ukraine, other administrative units of the Soviet system, as well as denominations associated with the fight against the participants in the struggle for independence of Ukraine in the twentieth century.
The amendments also include a new Point 5 in Article 6 (Grounds for Refusal of the Legal Protection), which reads:
Legal protection shall not be granted to a mark that contradicts p. 2 of Article 5 of the given Law, and the Ukrainian Law “On condemning the Communist and National Socialist (Nazi) totalitarian regimes in Ukraine and prohibiting the propaganda of their symbols”.
Under the transitional provisions of the new law, the rights holders whose trademarks contain communist and/or Nazi symbols are obligated to bring such trademarks in line with the legislation. However, it is not specified how this will work in practice.
There are some registered trademarks in Ukraine whose legitimate use can be put into question.
Source: www.petosevic.com
Jul 28, 2015 (Newsletter Issue 12/15)Nice Classification ExpectedThe Canadian Intellectual Property Office (CIPO) has recently announced that, starting from this fall, it will be possible to file trademark applications using goods and services grouped and classed under the Nice Classification.
Online tools will be improved to enable the use of the Nice Classification. Key enhancements include:
- Redesigned layout and navigation of the Goods and Services Manual that will provide assistance in selecting the appropriate classification to apply to goods and services; and
- New and improved search capabilities, which will give the user the ability to search the database for marks filed within a particular class of goods and services and see if there is overlap in the same general category.
CIPO expects that the implementation of the Nice Classification will help applicants and the agent community with the transition from the current trademarks regime to the new provisions — coming into force with the accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol.
For more information, please also check the article of Micheline Dessureault, Joli-Cœur Lacasse Avocats from Canada.
Source: Joli-Cœur Lacasse Avocats, Canada and www.ic.gc.ca Jul 14, 2015 (Newsletter Issue 11/15)Bureau for Intellectual Property of Sint Marten Now OnlineThe Benelux Intellectual Property Office (BOIP) has announced that the website of the Bureau for Intellectual Property of Sint Maarten is now online. The new BIP SXM is being established to register trademarks in Sint Maarten in partnership with BOIP. It needs to be noted that it is not yet possible to file applications for Sint Maarten trademarks with BIP SXM/ BOIP. At this moment BIP CUR is still the competent authority for Sint Maarten trademarks.
Alongside the website, a new online register for Sint Maarten is now also available. Trademarks cannot yet be filed with the BIP SXM, but this will be possible once the necessary legislation is in place.
All international trademark registrations valid in Sint Maarten are included in the online register. They will be mentioned in the list of trademarks found after a search and can also be retrieved by their registration numbers.
For detailed information concerning these international trademarks, the online register provides a link to the WIPO ROMARIN database, their original source. This link is activated by clicking the trademark concerned.
Source: www.boip.int, www.bip.sx Jul 14, 2015 (Newsletter Issue 11/15)
New And Improved Online Trademark Filing
The Benelux Intellectual Property Office (BOIP) has announced that it is now possible to file trademark applications online using the BOIP's updated web environment.
Benefits of the new environment:
- Intuitive and user-friendly
- Quick and easy to find and select all the relevant goods and/or services
- Immediate PDF confirmation in your mailbox, with the application number and a financial overview
The following needs to be noted:
- In order to submit trademark applications online, users must log in using their My BOIP account. The account can be set up on the BOIP's website free of charge.
- Payment is due online when the applications get filed. It can be paid with iDEAL, Bancontact, credit card or current account.
The new environment does not affect applications submitted via BMB Connect.
Quelle: www.boip.int
Jul 14, 2015 (Newsletter Issue 11/15)
Amendments of the New Trade Mark Act in British Virgin Islands
Major changes are about to take place in the IP regime of the British Virgin Islands, when the Trade Marks Act, 2013 (passed by the House of Assembly on April 30, 2013) comes into force on September 1, 2015.
The new Act will replace the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.
For trade mark owners to benefit from the existing provision that permits the “fast-track” extension of a United Kingdom national right to the British Virgin Islands , a UK-based application should be filed in good time before the present legislation is repealed and that option ceases to exist.
The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to 10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)
Transitional provisions:
- Existing independent and UK-based registrations will remain valid under the new law
- Existing independent and UK-based applications which are still pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)
A new scale of official fees is being introduced. This is currently under review, and should be in place by the time the new law takes effect.
Source: Spoor & Fisher, South Africa/Channel Islands
Jul 14, 2015 (Newsletter Issue 11/15)Official Fees Increased/New Rules on DeadlinesThe French National Trademark Office (INPI) increased the following official fees for some trademarks procedures since July 1, 2015.
The new official fee
- for a paper trademark application of up to three classes is now EUR 250 (instead of EUR 225)
- for a trademark application via e-filing of up to three classes is now EUR 210 € (instead of EUR 200)
- for a trademark renewal of up to three classes is now EUR 250 (instead of EUR 240)
- per additional class of goods/services (either for filing or renewal) is now EUR 42 (instead of EUR 40)
- for the amendment of a clerical error on a trademark is now EUR 104 (instead of EUR 100)
- for filing an opposition against a trademark is now EUR 325 (instead of EUR 310)
Further, a new Decree No 2015-511 of May 7, 2015 has been published in the Official Journal of May 8, 2015. The said Decree lists new rules on deadlines especially with trademarks, i.e.:
- The French TM Office (INPI) is now required to act within a period of six months from the filing of the application (filing or renewal).
- In the absence of an express decision within this period of 6 months, the application (filing or renewal) shall be deemed rejected.
- These provisions apply to all applications including the pending ones.
Source: Inlex IP Expertise, France
Jul 14, 2015 (Newsletter Issue 11/15)TBMP 2015 UpdateThe Trademark Trial and Appeal Board (TTAB) announces that the 2015 update to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is available online in a searchable version and in pdf.
To access the TTAB website, please click here
Source: www.uspto.gov Jul 14, 2015 (Newsletter Issue 11/15)
Range of E-services Expanded
On June 8, 2015, the Latvian Patent Office made available new electronic services on its official website. Before e-services were only available in respect of trademark and design filing.
Now the following actions can be also made online:
- Trademark and design registration renewal;
- Trademark and design owner change of name/address;
- Trademark and design registration cancellation according to a holder's own initiative.
Electronic services were developed by the Office for Harmonization in the Internal Market (Trade Marks and Designs) in view of existing cooperation project.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Jul 14, 2015 (Newsletter Issue 11/15)Arbitration Court EstablishedThe National Legal Internet Portal of the Republic of Belarus announced on its website that an Arbitration Court concerning information technologies and intellectual property was established in the Republic of Belarus.
The main activities of the Arbitration Court extend on disputes between legal entities and (or) natural persons in the sphere of information technologies and intellectual property such as:
- Disputes on recognition and contestation of authorship;
- Disputes on enforcement to fulfillment, on improper fulfillment or non–fulfillment of the conditions of license or sublicense agreements;
- Disputes on collecting remuneration according to license or sublicense agreements;
- Disputes on cancellation of the license or sublicense agreements;
- Disputes on collecting of compensation, losses, reimbursement of income gained by the third party for illegal usage of intellectual property object, etc.;
- Disputes on restraining violation of the rights in respect of intellectual property objects, including violation of rights taking place in the Internet.
Moreover, other disputes in the sphere of information technologies and intellectual property also fall within the competence of said Arbitration Court.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Jul 14, 2015 (Newsletter Issue 11/15)New Online Design RegisterAs of July 13, 2015, the Benelux Designs Register will be the official publication of drawings and designs. The Benelux Designs Gazette will therefore no longer be published.
All information previously available in the Benelux Designs Gazette is now available in the online register. This register contains the details and images of the drawings and designs registered in the Benelux valid on January 1, 2012 or registered on a later date.
The details of, among others, renewals and changes of the registrations can also be consulted via the register. The publication will initially be updated monthly. In the near future, the publication will happen on a daily basis, as is currently already the case for the Benelux Trademarks Register.
Designs older than January 1, 2012 are still available in the Benelux Industrial Designs Gazette, previously the official place of the publication.
Source: www.boip.int Jul 14, 2015 (Newsletter Issue 11/15)
TM Owners Need to Re-Submit Documents
The Angolan Institute of Industrial Property (IAPI) informed that a substantial backlog has accumulated since the implementation of Angola’s IP law in 1992, and in an effort to address this, the Director General has initiated a restructuring programme.
A notification has been issued to owners of pending and registered trade marks with an allotted official number from 0001 to 5000.
Trade mark owners must re-submit the following documents for the purpose of updating the official files at the Registry:
1. Photocopies of the official filing forms, which include copies of the application as filed, together with copies of any requests for renewal and/or any subsequent changes of ownership.
2. Power of attorney, incorporating a verified Portuguese translation, legalised up to an Angolan Consul.
3. A certificate of incorporation/extract from the Commercial Register with verified Portuguese translation legalised up to an Angolan Consul.
IAPI has confirmed that photocopies of the legalised supporting documentation will be accepted provided that the authentication stamp is visible.
IAPI will also accept copy documents originally legalised by Apostille in accordance with the practice at the time of the original filing.
All documents are to be submitted by September 28, 2015. Failure to comply may lead to the invalidation of the trade mark(s).
Source: Spoor & Fisher, South Africa
Jun 30, 2015 (Newsletter Issue 10/15)Changes in Requirements for Collective Trademarks and Service MarksThe USPTO has issued a final rule relating to Changes in Requirements for Collective Trademarks and Service Marks, Collective Membership Marks, and Certification Marks. The rule published in the Federal Register today (80 Fed. Reg. 33,170 (June 11, 2015)), and will become effective July 11, 2015.
This rule primarily codifies current USPTO practice and provides the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks.
It contains a new requirement for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark.
The rule also includes some amendments that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use. A link to the final rule is available under 'Recent Final Rules' at http://www.uspto.gov/trademark/laws-regulations
Source: www.uspto.gov Jun 30, 2015 (Newsletter Issue 10/15)Official Fees IncreasedUnder the Order No. 294 dated May 26, 2015, of the Minister of Justice of the Republic of Kazakhstan new official fees came into effect as of June 11, 2015.
Particularly, official fees for trademarks have been significantly increased from about 20 to about 100 percent.
The new official fee for filing a trademark application, including examination, is now KZT 60,599.84 for up to three classes. The filing fee for each additional class is KZT 9,800. The official registration fee is KZT 24,000.48.
Also, the possibility of accelerated prosecution of the inventions has been introduced. The official fees for acceleration of the formal and substantive examinations are respectively 15 percent and percent higher than the stipulated basic fees. Previously excluded percent discount on the examination fee for applications with established international search report or an international preliminary examination report was retrieved.
In the meantime, new percent discount was added for applicants being small and middle entities related to the registration of inventions, utility models, industrial designs and selection achievements. It should be noted that aforesaid discount is provided only to resident entities.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine and Tagbergenova & Partners, Kazakhstan Jun 30, 2015 (Newsletter Issue 10/15)Draft Trade Marks Bill The new Trade Marks Bill, 2014 went before the Senate of Trinidad and Tobago for consideration on April 13, 2015. Once passed into law as the Trade Marks Act, the bill would repeal and replace the current Trade Marks Act, Chap. 82:81. Perhaps most notably, the bill includes provisions that would allow the Minister responsible for intellectual property rights to make regulations giving effect to the provisions of the Madrid Protocol. Thus, Trinidad and Tobago is paving the way towards implementation of the Madrid Protocol and allowing designation of the country on international applications filed through the World Intellectual Property Organization. It would be one of the first Commonwealth Caribbean countries to implement the Madrid Protocol—the only other country that has done so thus far is Antigua and Barbuda.
The Trade Marks Bill provides for greater protection of well-known trademarks in the islands. There are also a number of provisions regarding border enforcement measures. These provisions allow for trademark owners to alert the Comptroller of Customs & Excise to potentially infringing goods that are being transited to or through the country. Notably, trademark owners will be required to deposit an amount of funds to cover any expenses incurred by the State in seizing and investigating the potentially infringing goods.
Although it has been possible to register certification marks under the current legal framework, it will also be possible to register collective marks under the new law.
With respect to classification of goods and services, the bill indicates that goods and services “shall be classified … according to a prescribed system of classification,” leaving the door open to implementation of the most recent version (the tenth edition) of the Nice Classification. Trinidad and Tobago currently adheres to the seventh edition of the Nice Classification, which provides registration up to Class 42 only.
Applicants will be allowed to convert pending applications that have not yet been advertised to become applications examined under the new law. This process will require the applicant to give notice to the Controller and pay a prescribed fee; however, it is important to note that conversion will be possible only for six months after the commencement of the new law. Existing registered marks will be deemed registered trademarks for the purposes of the new law. While existing disclaimers or limitations entered on the register under the prior law will remain viable, all associations entered with respect to other registered marks will cease to have effect upon commencement of the new law.
Once the new law becomes effective—hopefully by the end of this year—no application for revocation of an existing registered mark registered under the prior law may be made until more than five years have passed from the commencement of the new law. Importantly, the new law increases the non-use period from three years to five years.
Source: INTA Bulletin Vol. 70 No. 11 of June 15, 2015
Contributor: Caribbean IP, USA and verifier: J.D. Sellier + Co., Trinidad and Tobago
Jun 30, 2015 (Newsletter Issue 10/15)
Patent and Trademark Office Moved
The «National Institute of Intellectual Property» of the Ministry of Justice of the Republic of Kazakhstan moved to another building. The new address of the location is:
National Institute of Intellectual Property of the Ministry of Justice of the Republic of Kazakhstan
Left Bank, Oryndor str., 8, Body 1, Entrance # 1, # 2.
010000 Astana
Republic of Kazakhstan
Phone +7 8 7172 74 95 80 (Reception)
Source: www.kazpatent.kz
Jun 30, 2015 (Newsletter Issue 10/15)
New Online Filing System Mandatory
Since May 18, 2015, it has been mandatory to file applications for patents for industrial inventions, utility models, designs, company trademarks, and Italian portions of granted European patents using only the new centralized portal set up by the Italian Patent and Trademark Office (IPTO). It is therefore no longer possible to file such applications on the telematic platform used up to now. If they are filed with the Chambers of Commerce, acting as branch offices of the IPTO, then the Chambers of Commerce will submit the applications using the new, centralized portal.
For the first few days of using the new filing system – as was to be expected – there have been some difficulties, and a number of areas need to be improved or changed. The IPTO, in any case, is in continual contact with firms working in the sector and despite the short period that has elapsed since the new procedure was rolled out, many problems have already been resolved and the new system is now even more usable and reliable.
Also, payment of the fees and dues can no longer be made with postal orders, but exclusively with online payments.
Source: Modiano & Partner, Italy
Jun 30, 2015 (Newsletter Issue 10/15)
IR Designating Italy Do Not Automatically Cover San Marino
On 23rd December 2014, the Patent Office of San Marino issued a recent interpretation of Article 43 of the Convention of Friendship and Good Neighbourhood entered into by Italy and the Republic of San Marino. Article 43 of the Convention defines that: "Each of the two States is obliged to prevent, within its territory, any usurpation of inventions, models and designs that are subject, in the other State, to industrial property rights, and any usurpation or infringement of trademarks or brand names duly registered and protected in the other State".
Based on this new interpretation, which was provided by the San Marino patent office following ratification of the exchange of notes between Italy and San Marino, as from 23rd December 2014 mutual recognition will only apply to trademarks, patents, designs and models registered or granted based on national applications, namely applications filed with the Italian Patent and Trademark Office or with the San Marino Patent and Trademark Office.
Consequently, it will no longer be possible for the holder of an international trademark or a European patent to enjoy protection also in San Marino simply by extending the scope of protection to Italy. Therefore, holders of European patents and international trademarks who wish to protect their inventions in the Republic of San Marino will be obliged to pay the national fees to the San Marino Patent Office.
Source: Rapisardi Intellectual Property, Italy
Jun 30, 2015 (Newsletter Issue 10/15)Tax Stamps IncreaseThe Venezuelan Patent and Trademarks Office (VPTO) has issued a group of notices confirming that, as of May 28, 2015, the increase in value and change in acceptable currency of payment applicable to transactions by foreign individuals and corporations as established in Article 06 of the Presidential Decree No. 1398 that reforms the Stamp Duty Law of November 18, 2014, will be mandatory.
Holders of foreign nationality have to pay an equivalent payment in USD, at the lowest exchange rate in the market, determined by the Banco Central de Venezuela. The payments have to be done by the holder to a specific account created by SAPI. An official notice by the VPTO was published on May 22, 2015, confirming that the currency exchange rate of VEF 6,30 X USD 1,00 will be applicable, for the time being.
The new fees and the aforementioned payment method for companies or natural person of foreign nationality is effective since May 28, 2015 and will concern the following procedures:
-Payments of registration fees (granting) of trademarks and patents
-Registration of assignments and mergers that include trademarks and patents
-Trademarks renewal
-Registration of licenses of use that include trademarks and patents
-Registration of name and/or address changes of trademarks and patents holders
-Payment of annuities for the maintenance of patents, according to the table attached to the official notice
Source: Citemark International IP, Venezuela; B&R Latin America IP LLC, Colombia and Moeller IP Advisors, Argentina
Jun 30, 2015 (Newsletter Issue 10/15)New Directives on Submission of PoAOn June 7, 2015, the Iraqi Trademarks Registrar has released new directives stipulating the submission of a power of attorney legalized up to an Iraqi consulate abroad for all trademark applications whose filing date exceeded six months. Otherwise the Registrar will apply strictly article no. 16 of the Iraqi Trademarks and Geographical Indication no. 21 of 1957 which states that:
Where registration of a trademark is not completed within six months from the date of the application by reason of default on the part of the applicant the Registrar may inform the applicant, in writing, to complete the registration within the period prescribed in the regulation made under this law. Otherwise he shall be considered as having abandoned the application.
Source: JAH & Co. IP, Qatar Jun 16, 2015 (Newsletter Issue 9/15)Late Filing of Required DocumentsIt is now permitted under the practice of the Omani Trademark Registrar to file trademark applications and obtain a filing number and date as well as the official filing certificate, renewal, recordal of change of name, address, assignment or license agreement without the complete required documents which should be submitted at a later stage after filing within sixty days from the filing date.
In case of submission of the necessary documents after sixty days from filing date a penalty of USD 55 will be due for late filing of the necessary documents.
Source: JAH & Co. IP, Qatar Jun 16, 2015 (Newsletter Issue 9/15)Official Stamp Fees IncreasedThe Sudanese Trademarks Registrar has increased the official stamp fees for filing trademark application in one class in Sudan from SDG 100 to SDG 200. The increase is effective immediately for all new applications.
Source: JAH & Co. IP, Qatar Jun 16, 2015 (Newsletter Issue 9/15)New Trade Mark Act in British Virgin IslandsOn September 1, 2015, the British Virgin Islands’ new Trade Marks Act, 2013 and Trade Marks Rules, 2015 will go into effect, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.
For many years, this has been a relatively fast track to registration for UK mark owners. For trademark owners without an existing UK registration, the current regime requires application within the local system. At present, the local system allows new filings for goods only, and all goods must be classified according to the British classification system.
Long outdated, this classification system does not afford adequate protection for many mark owners. Under the new regime, all applications will be made within the local filing system, and finally it will be possible to register both goods and services according the International Classification system. New fees have not yet been set but should be determined before the implementation of the new trademark laws.
Source: Caribbean IP, USA posted on www.iptango.blogspot.de Jun 16, 2015 (Newsletter Issue 9/15)Trademark Examination Guidelines Changed The newly amended Examination Guidelines ("Guidelines") of the Korean Intellectual Property Office ("KIPO") went into effect on January 1, 2015. The following are some of the more notable of the many changes made to the Guidelines.
1. Dilution as a new refusal ground
2. Consumer confusion as a basis for determining similarity
3. Applications filed by related applicants
4. Bad faith applications for imitation marks
5. Use of third party registered marks in the goods description
6. Registration of slogans
7. Miscellaneous
The new Guidelines make it easier for applicants to obtain a registration from KIPO by stating that priority claims may be accepted for applications even if they do not designate exactly the same goods/services as the previous application (previously, the marks and goods were required to be identical even if changes in one application were necessary to comply with the laws of other countries), and by permitting modifications to the trademark for "correction of obvious errors or size, [and] removal of minor portions."
The new Guidelines also provide protection not only for geographical indications ("GIs") currently protected under the Korea-European Union Free Trade Agreement, as well as GIs identified under the Korea-Canada Free Trade Agreement, which went into effect earlier this year.
For further information, please view the article of our contributors Ms Jee and Ms Kim from Kim & Chang here
Source: www.kimchang.com Jun 16, 2015 (Newsletter Issue 9/15)
Kyrgyzstan Joins Eurasian Economic Union
On May 21, 2015, Kyrgyzstan’s President Almazbek Atambayev signed the law ratifying treaties on Kyrgyzstan’s entry into the Eurasian Economic Union (EEU).
Kyrgyzstan will officially become the fifth member of the EEU, alongside Russia, Kazakhstan, Belarus and Armenia after the accession treaty is ratified by the parliaments of the other members.
Most Kyrgyz officials claim that joining the union, a single market for the free movement of goods and services, will strengthen the economy, decrease unemployment, improve Kyrgyzstan’s agricultural sector and trade with EEU members, but retailers and importers are concerned about the higher customs tariffs and stricter regulations for products coming from the countries outside the EEU.
Source: www.petosevic.com
Jun 16, 2015 (Newsletter Issue 9/15)
Administrative Appeal against Industrial Designs/Utility Models Considered
During a recent roundtable organized by the Ukrainian IPO in Kiev, Ukraine, the majority of the attendees, mostly IP practitioners, supported the idea of legislation changes that would introduce an administrative appeal against the registered industrial designs and utility models.
In Ukraine, there is no substantive examination of industrial design and utility model applications. This fact encourages copying and registration of identical or similar designs and utility models, mostly as an act of bad faith. Moreover, such registered industrial designs and utility models become recorded in the customs register of IP rights, thus hampering the movement of goods across the border.
At the moment, the Ukrainian PTO only has a brief outline of the future system, but the main idea is to place the Board within the PTO in charge of considering such appeals, organizing substantive examinations and making decisions on invalidation of IP rights.
The interested parties will be able to appeal the Board’s decisions in court, but the PTO is aiming to make the procedure faster and less time and money consuming compared to the judicial procedure of invalidation currently available.
It is expected that the draft laws containing these amendments will be completed and published in July-August 2015.
Source: www.petosevic.com
Jun 16, 2015 (Newsletter Issue 9/15)Legal Extension to Kurdistan AbolishedThe Iraqi Trademarks Registrar has issued new directives abolishing the legal extension of registered Iraqi trademarks to Kurdistan.
Prior to this decision, it was possible to extend registered Iraqi trademarks to Kurdistan: If a trademark was already registered or accepted for registration in Iraq and the owner of the mark wished to extend its protection to Kurdistan, an official letter needed to be issued by the Iraqi Trademarks Registrar in Baghdad to the Registrar of Trademarks in Kurdistan furnishing him with the complete details of the concerned trademark and a report on its latest status in order to protect the mark and accredit its registration under Kurdistan jurisdiction.
Such practice is abolished now: When protection in Kurdistan is needed the application for registration should be filed directly with the Kurdistan trademarks office.
Source: JAH & Co. IP, Qatar May 27, 2015 (Newsletter Issue 8/15)Publications Only Online AvailableThe Austrian Patent Office announced on its website that they have ceased the printed publications of the Patentblatt, Gebrauchsmusterblatt, Marken- und Musteranzeiger.
Since January 2015 the above mentioned publications have been available online only. The Office publishes the official Gazette (Österreichischer Marken- und Musteranzeiger) on its website every month on the 20th. The electronic publications can be seen here
Source: www.patentamt.at May 27, 2015 (Newsletter Issue 8/15)Filing of Oppositions Online PossibleThe Benelux Intellectual Property Office (BOIP) has announced that customers can file oppositions against trademark applications online as from April 21, 2015.
The online procedure for filing oppositions is largely the same as the paper procedure, but it offers a number of important benefits. For example, it allows customers to file oppositions at any time and from any location, provided they have access to an Internet connection. Furthermore, customers can easily import the disputed trademark and the right invoked from TMview. Online filings also involve no paper forms and customers receive an e-mail confirmation in the form of a PDF file immediately following filing. Paper filings of oppositions will remain possible.
For more information on the opposition procedure, please click here
Source: www.boip.int May 27, 2015 (Newsletter Issue 8/15)
Fast-Track Processing for Trade Register Notifications
The Finnish Trademark Office announced that they have improved the processing of filing the Trade Register online in collaboration with the Finnish Tax Administration.
The processing time has been reduced to 1-2 days when filing notifications online via the Office's website at ytj.fi.
The following online filing services are provided:
- changes to company’s address or contact details (available for all company types)
- changes to boards of directors or other persons responsible for limited liability companies or housing companies
- setting up a limited liability company online
The online filing services are only available in Finnish and Swedish.
Further, the Office points out that it is cheaper to file notifications online than on paper.
Source: www.prh.fi
May 27, 2015 (Newsletter Issue 8/15)International Design Registration System Now Available On May 13, 2015, the Geneva Act of the Hague Agreement officially entered into force in Japan.
The Geneva Act is an international treaty aiming to simplify applicants’ registration procedures for industrial designs in multiple countries and to reduce their costs for such procedures. It enables applicants to file a design application in multiple countries by filing a single international application directly or via a domestic office to the International Bureau of the World Intellectual Property Organization (WIPO).
The Geneva Act also enables integrated control of the design rights that were granted in multiple countries.
For more information, please click here
Source: www.meti.go.jp May 27, 2015 (Newsletter Issue 8/15)Online Design Register Now AvailableThe Patent and Trademark Office 'Amt für Volkswirtschaft' announced that the office now provides an online design register. The online design register contains active registrations only.
It can be accessed under www.designregister.llv.li
Source: www.llv.li
May 13, 2015 (Newsletter Issue 7/15)
Accession to WTO
On March 25, 2015, President James Michel signed the "Instrument of Acceptance" of Seychelles' Accession Protocol, confirming its membership terms, at a plenary meeting of the Cabinet of Ministers in Mahé, Victoria, Seychelles. According to WTO rules, the 30-day countdown to its WTO membership was activated on March 27, 2015 and Seychelles officially became a WTO member on April 26, 2015. On April 26, 2015, Seychelles became the 161st WTO member.
Seychelles shall now have access to the markets of all 160 WTO members with the accession.
Source: www.wto.org
May 13, 2015 (Newsletter Issue 7/15)Electronic System for Industrial Designs LaunchedOn April 7, 2015, the Brazilian PTO (INPI) published in the Official Gazette Resolution 146/2015 that an electronic system for the online filing of industrial designs has been established. This new online service offers discounts on service fees.
For more details on how to use the new electronic system for industrial designs, please check the User Guide (only in Portuguese available).
Source: Moeller IP Advisors, Argentina May 13, 2015 (Newsletter Issue 7/15)
Changes to IP Law Expected
The local PTO considers that Law N° 19.039 concerning IP matters should be modified and updated. The IP authority sent the draft law to the Congress for analysis.
The main points of the legislation can be summarized in three aspects:
- new trademarks categories are included, such as three-dimensional trademarks.
- there are more benefits concerning fees
- the trademark and patents process would be improved and simplified.
Source: Moeller IP Advisors, Argentina
May 13, 2015 (Newsletter Issue 7/15)Drastic Official Fees IncreaseThe Cabinet Ministers of UAE has announced that the official fees for a wide range of services provided by the Ministry of Economy including trademarks, patents, copyrights and designs will be increased by virtue of Decision No. 9 of 2015. The said decision will be effective as from May 29, 2015.
The new official fee for filing a trademark application will be 1,000 AED/273 USD (instead of 500 AED/137 USD) in one class. The new publication fee in the Trademark Journal after acceptance will be 1,000 AED/273 USD (instead of 500 AED/137 USD). The new registration fee of a mark or a series of marks in one class will be 10,000 AED/2,725 USD (instead of 5,000 AED/1363 USD). The publication fee in the two local newspapers remains the same.
There is uncertainty about whether this fee increase will be applied retroactively for pending applications.
Source: JAH & Co. IP, Qatar and Karawani Law Firm, United Arab Emirates May 13, 2015 (Newsletter Issue 7/15)
Recording of Licenses in International Register no Effect
The Government of Cambodia has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in Cambodia.
Consequently, a license relating to an international registration of a mark which has been granted with respect to Cambodia shall, in order to have effect in that Contracting Party, be recorded in the national Register of the Office of Cambodia. The formalities required for such recording must be completed directly with the Office of Cambodia and according to the conditions laid down by the legislation of that Contracting Party.
The notification made by the Government of Cambodia under Rule 20bis(6)(b) of the Common Regulations shall enter into force on the date of entry into force of the Madrid Protocol with respect to Cambodia, namely, June 5, 2015.
Source: www.wipo.int
May 13, 2015 (Newsletter Issue 7/15)Official Fees IncreasedThe official filing fees have been increased by the Management of the Registrar-General’s Office in accordance with Legislative Instrument 2216, 2014 with effect from April 13, 2015.
The general increase across the board is between 33% to 50%. The new official fee for filing a trademark is now USD 200 instead of USD 150. The application for a Registration Certificate is now USD 200. Lodging of a Notice of Opposition is USD 180.
Source: JAH & Co. IP, Qatar
May 13, 2015 (Newsletter Issue 7/15)IP Law AmendedThe Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin" has been amended and the following changes came into effect on April 20, 2015:
- It is no longer possible for several persons to be listed as co-applicants for one application and the requirement for applicants - natural persons to be registered as individual entrepreneurs was abolished;
- An applicant will have the right to file a request for assignment of a trademark application without executing and registering an assignment agreement;
- Issuance of a trademark certificate is cancelled. The information about trademark registration is published by the expert organization in the Official Bulletin and in the Internet resources. The fact of a trademark registration and of amendments to this registration is confirmed by the extract from the State Register of Trademarks.
- The timing of the trademarks registration has been reduced. The Law establishes the timeframes for all stages of the examination of the application for registration of a trademark, details the timing of the approval of preliminary and final expert opinions by the Ministry of Justice of the Republic of Kazakhstan, the timing of the delivery of such opinions to the applicants.
- The list of absolute grounds for refusal in trademark registration has been changed. The registration formerly would have been refused if a trademark consisted exclusively of designations which are non-distinctive and constitute international unpatentable names of pharmaceuticals (e.g., amoxicillin, ampicillin). Such basis as direct associative connection with the goods or services for the designation of which the trademark is used has been excluded from the list of absolute grounds. Previously, the existence of those absolute grounds precluded the registration of practically any trademarks that could be associated with the applied goods and/or services.
- Disputes arising from trademark registration (or refusal thereof) and non-use cancellation of trademarks cannot be brought directly to the court. They will be considered by the Appeal Board of the Trademark Office first.
Source: Tagbergenova & Partners, Kazakhstan; Mikhailyuk, Sorokolat & Partners, Ukraine and Dentons, Kazakhstan Apr 15, 2015 (Newsletter Issue 6/15)
New Practice Direction on Class Headings
On February 4, 2015, the Jamaica Intellectual Property Office (JIPO) issued a practice direction on class headings which became effective on March 4, 2015.
The effect of the practice direction is to prohibit the filing of trade mark applications which designate international class headings as specification of goods or services. Accordingly, a trade mark applicant is now required to provide the specific goods or services for which trade mark protection is being sought.
We have been advised that the USPTO acceptable list of goods and services will be acceptable in Jamaica.
Source: Livingston, Alexander & Levy, Jamaica
Apr 15, 2015 (Newsletter Issue 6/15)Legalisation of PoA NeededLebanon declared a revision of the power of attorney requirements on March 21, 2015. The memo, issued by the Ministry of Economy and Trade, stated that all power of attorney submissions for handling all intellectual property related cases after April 10, 2015 must be legalised by the Lebanese consulate. The Lebanese consulates abroad will provide legalisation services for documents. Applications filed prior to the aforementioned date will not be affected.
The new requirements will be effective on April 10, 2015 for local Lebanese clients. However, for all foreign companies (non-Lebanese) the requirements of the power of attorney legalisation up to a Lebanese consulate abroad will be effective on May 1, 2015.
Source: JAH & Co. IP, Qatar and Fady J. Sarkis, Lebanon Apr 15, 2015 (Newsletter Issue 6/15)Update on Opposition ProceedingsThe Head of the Trademarks Department at the Ministry of Economy in the UAE issued a Decree No. 2 for the year 2015 on February 22, 2015, stating the following:
- IP agents should inform the Trademarks Registry of any updates regarding oppositions; e.g. lack of response, waiver of the opposition, settlement, etc. so they can do what is necessary;
- Samples of the publication should accompany the opposition in order to calculate the opposition period;
- The fees of the hearing of AED250 should be settled in a timely manner;
- All accompanying documents should have certified translation locally;
- After the hearing, a decision will be made immediately;
- All attendees of hearing sessions should be fully acquainted with Arabic language reading and writing;
- The hearing time will be no more than 30 minutes, after which the session will be called off;
- If more documents are requested by the Opposition Committee, the agent should provide the same within three (3) days;
Though all the items mentioned are not new as they constitute the normal and ordinary process of the trademarks oppositions in UAE; however the Trademarks Registrar is impressing on the implementation of all above so as to accelerate the settlement of all pending oppositions .
Any interested party may object the registration of a trademark, and submit the written opposition to the Trademarks Registry, or send it to the Ministry by registered mail within thirty days from the date of last publication. The Trademarks Registry shall notify the registration applicant with a copy of the opposition to his application within fifteen days from the date of receiving such opposition. The registration applicant has to file a written counter statement to such opposition to the Ministry within thirty days from the date of being notified with the opposition. If the counter statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application. Before deciding the oppositions submitted, the Ministry shall hear the sayings of both parties or the party requesting such hearing. The Ministry shall issue a decision rejecting or accepting the registration. It may determine whatever limitations or conditions deemed fit in the latter case. Any interested party may petition before the Committee against the Ministry’s decision within fifteen days from the date of being notified therewith. He may appeal against the Committee’s decision before the concerned civil court within thirty days from the date of being notified with the decision. It shall not entail appeal of a decision of accepting the trademark registration that the registration procedures should be stopped unless the concerned court decides otherwise.
Source: JAH & Co. IP, Qatar Apr 15, 2015 (Newsletter Issue 6/15)E-Filing of Design Applications AcceptedThe Controller General of Patents, Designs and Trade Marks in India issued the following statement regarding the e-filing of design applications in the country:
In order to expand the paperless environment and ease access in all offices under the Controller General of Patents, Designs and Trade Marks, electronic filing system has been extended for the filing of new applications of designs.
All the applicants/stakeholders can now file design applications through the official portal of Controller General of Patents, Designs and Trade Marks at www.ipindia.gov.in and www.ipindia.nic.in.
The e-filing facility includes the comprehensive payment gateway comprising net banking, debit cards, ATM cards and credit cards. The users can also use their existing digital signatures (used in patents or trademarks) for login and authentication into the e-filing system of design.
Source: www.agip.com Apr 15, 2015 (Newsletter Issue 6/15)
Official Fees Increased
The Sudanese IP office announced that the official fees for filing trademark applications in one class including stamp duty in Sudan has been increased to SDG 233 instead of SDG 133 as from March 1, 2015.
Source: www.agip.com
Apr 15, 2015 (Newsletter Issue 6/15)
Official Fees Slightly Reduced
The Israel Trademark Office (ITO) has slightly reduced the official filing fees as from January 1, 2015. The new official fee for filing a trademark is ILS 1,617 for the first class and ILS 1,215 for each subsequent class.
This is the first time after several years of increase that those fees have been slightly reduced.
Source: Ezratty-Farhi Law Firm, Israel
Apr 15, 2015 (Newsletter Issue 6/15)Examination Guidelines RevisedThe Japan Patent Office (JPO) has revised the examination guidelines for similar goods and services (corresponding to the Nice classification, 10th edition, version 2015).
The examination guidelines has been reviewed and corrections of erroneous description concerning of some English entries in these guidelines have been made.
The list of changes from the version publicized on February 4, 2015, to the version publicized on April 10, 2015 can be seen here and here
Source: www.jpo.go.jp Apr 15, 2015 (Newsletter Issue 6/15)Nice Classification in Japanese ReleasedThe Japan Patent Office (JPO) released the "International Classification of Goods and Services in Japanese translation with Similar Group Code" corresponding to the International Classification of Goods and Services 10th edition, version 2015.
The International Classification of Goods and Services 10th edition, version 2015 is applied to the applications on or after January 1, 2015.
To access the "International Classification of Goods and Services in Japanese translation with Similar Group Code" please click here
Correction of erroneous description concerning can be seen here
Source: www.jpo.go.jp Mar 31, 2015 (Newsletter Issue 5/15)
Increase of Fees Suspended
Law no. 31/2015 for suspension of the provisions of art. 4 of Government Ordinance no. 41/1998 on the protection of industrial property fees and the use thereof was published in Official Gazette of Romania, Part 1, no. 169 dated March 11, 2015.
The normative act suspends, until the 31th of December 2016, the appliance of the provisions of the Government Ordinance no 41/1998 on upgrading the official fees in lei owed by natural and legal persons in the field of industrial property protection.
Nicolae Muresan, Andra Musatescu Law & Industrial Property Offices, Bucharest
Mar 31, 2015 (Newsletter Issue 5/15)New E-Filing for International Registrations Now Available IP Australia informs that the new e-filing system for international trademark registration applications is now available.
The International Registration Process Integration (IRPI) is an e-filing application system for submitting international trade mark applications to the World Intellectual Property Organization.
The IP Australia eServices channel now includes access to IRPI, the World Intellectual Property Organization (WIPO) electronic filing facility, which offers the ability to securely apply and manage your applications for filing international registration applications (Madrid Protocol).
To find out more about the benefits of filing your application with IRPI please click here
Source: www.ipaustralia.gov.au Mar 31, 2015 (Newsletter Issue 5/15)Official Fees Increased Soon The French National Trademark Office (INPI) has informed that the trademark application fees will increase on average 4 percent as from July 1, 2015:
For a paper trademark application of up to three classes, the official fees will be EUR 250 (instead of EUR 225)
For an e-filing of up to three classes, the official fees will be EUR 210 (instead of EUR 200)
With regard to the additional classes, no information have been communicated for now. However, the INPI does not exclude to increase the current amount of EUR 40 due for each additional class (no matter whether paper or electronic application).
Source: Inlex IP Expertise, France
Mar 31, 2015 (Newsletter Issue 5/15)
Accession to the Madrid Protocol
On March 5, 2015, the Government of Cambodia deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”).
The Madrid Protocol will enter into force, with respect to Cambodia, on June 5, 2015.
The said instrument of accession was accompanied by the declaration referred to in Article 5 (2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit.
Source: www.wipo.int
Mar 31, 2015 (Newsletter Issue 5/15)New Industrial Property Act in Effect Now The new Industrial Property Act 2014 came into effect on March 1, 2015 in the Seychelles.
As for trademarks, Convention priority can now be claimed, the initial registration term goes up from seven years to the more usual ten, and there is provision for collective marks and geographical indications.
Design protection is now possible, and the term is five years, extendible for two further five-year periods. There is also provision for the registration of utility models and original layout designs of integrated circuits. In each case the protection term is ten years.
For further information, please click here
Source: Spoor & Fisher Jersey Mar 31, 2015 (Newsletter Issue 5/15)
Official Fees Increased
The Intellectual Property Department of Hong Kong has revised the official fees for various trademark matters with effect from March 30, 2015.
The new official trademark filing fee is HKD 2,000 for the first class and HKD 1,000 for each additional class.
Source: Wilkinson & Grist, Hong Kong
Mar 18, 2015 (Newsletter Issue 4/15)National Industrial Design Register LaunchedIn December 2014, the Montenegrin IPO introduced the National Register of Industrial Designs, a new online database and search tool providing access to 115 registered designs.
The users can obtain information on registered designs by entering search criteria such as the application and registration number, the name of the design, the name of the owner and the Locarno classification numbers. The search leads to detailed information on registered designs in the Montenegrin language.
To enter the online database, please click here
Source: PETOSEVIC Montenegro Mar 18, 2015 (Newsletter Issue 4/15)Change of Practice of PoADue to a recent change of practice for foreign applicants, the Greek Trademark Office requires that the PoA is authenticated up to the Hague Apostille.
Alternatively, the PoA can be filed without legalization provided that it is accompanied by a certified copy from the Companies’ Register or equivalent authority indicating that the signing person is an authorized legal representative with Apostille authentication.
Source: Law Office Evanghelou, Greece
Mar 18, 2015 (Newsletter Issue 4/15)Examination Guidelines Announced The JPO announces that responding to the new revision of Nice Classification (NCL10-2015) based on Nice Agreement Concerning the International Classification of Goods and Services for Registration of Marks, the Examination Guidelines for Similar Goods and Services has been revised.
The examination guidelines for similar goods and services is applied to the applications on or after January 1st, 2015.
For more information on the guidelines, please click here
Source: www.jpo.go.jp Mar 18, 2015 (Newsletter Issue 4/15)Non-Traditional Trademarks Soon RegisterableThe Japanese Ministry of Economy, Trade and Industry (METI) has published on January 23, 2015 that the long-planned amendments of Japanese IP laws have passed the parliament and will enter into force on April 1, 2015,
The amendments include that non-traditional trademarks like colours, sounds, movements, holograms and position marks are registerable.
Further, applicants of designs can file one application at one office instead of having to file the same application in several countries where protection is needed. This will lower the costs (adaptation to the Geneva revision of the Hague agreement).
For further details, please see the METI website (Japanese only).
Source: www.epo.org Mar 18, 2015 (Newsletter Issue 4/15)New Interface to Access IPO’s InformationOn January 1, 2015, the Indian Patent Office has launched a new interface to its website, which enables users to access legal texts, official publications and searchable information for trademarks, designs and patents all from one page. This new guide named Explore IPINDIA is available in a dedicated section of the Indian Patent Office's website.
Source: www.epo.org Mar 18, 2015 (Newsletter Issue 4/15)Autonomous IP Service in ProgressThere have been several important developments at Venezuela’s Autonomous Intellectual Property Service (SAPI) in the last six months. Most recently, on January 29, 2015, Cristina Piña Sierralta was appointed as the new Director of SAPI’s Industrial Property Registry.
On October 15, 2014, users, interested parties and the general public were notified via an Official Notice that the pricing of products and/or services provided by SAPI had been adjusted, effective the same date.
Additionally, on August 19, 2014, SAPI established a “Taquilla Integral,” which is a central office where applicants can initiate proceedings at the Trademark Office.
In addition to the traditional way of making bank deposits, the Autonomous Intellectual Property Service has implemented new payment options, such as bank transfers and point of sale debit card payments.
Also, the online help system, WEBPI, will offer a new option which will allow users to process their application and search a phonetic and/or graphic registration history from their home or office.
These changes should help to improve efficiency for trademark applicants in Venezuela overall, particularly with respect to electronic search results. For more information, please click here
Source: INTA Bulletin, Vol. 70 No. 4, contributor: Barbarita Guzmán, Markven Propiedad Intelectual S.C., Caracas and verifier: Ricardo Alberto Antequera, Estudio Antequera Parilli, Caracas Mar 18, 2015 (Newsletter Issue 4/15)IP Laws Amendment Bill 2014 PassedThe Intellectual Property Laws Amendment Bill 2014 was passed by the Australian Parliament on February 9, 2015. The resulting Intellectual Property Laws Amendment Act 2015 received the Royal Assent on February 25, 2015.
The Act amends the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, and the Plant Breeder's Rights Act 1994 in order to:
- implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
- extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder's rights matters
- allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
- make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
- make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.
For more information, please check here
Source: www.ipaustralia.gov.au
Mar 18, 2015 (Newsletter Issue 4/15)
Trademark Application Backlog Reduced
The Brazilian Industrial Property Institute (INPI) could decrease the backlog of trademark applications for the first time in four years. This enhancement of examination capability at INPI Trademark Department was due to improvements in two critical areas: human resources and information technology.
So increased INPI the number of trademark examiners from 66 to 102, reaching the highest number in the history.
Further, the Office improved its information technology. The consolidation of IT systems contributed to both, the 19% increase of examiners productivity and the improvement of management tools in the Trademark Department.
Before, the average growth rate of the backlog was 22% per year from 2010 to 2013.
Source: www.inpi.gov.br, Moeller IP Advisors, Argentina
Mar 18, 2015 (Newsletter Issue 4/15)
Online Application System Implemented
As of January 18, 2015, the Turkish Patent Institute has enabled all process of online applications via e- signature/mobile signature. For this purpose, amended Requlation has been published in the official Gazette No: 29240 and entered into force on January 18, 2015.
Meanwhile with the amended requlation, “address change fees” has been removed.
Source: www.tpe.gov.tr
Mar 18, 2015 (Newsletter Issue 4/15)More E-Services IntroducedAs of February 16, 2015, the Slovenian Intellectual Property Office (SIPO) allows electronic filing of seven more applications regarding national trademarks and designs through an online application, which was developed in close cooperation with OHIM - Office for Harmonization in the Internal Market (Trade Marks and Designs).
They are:
- Transfer of rights (trademarks and designs)
- Change of owner's data (trademarks and designs)
- Renewal of trademarks and designs
- Opposition against registration of a trademark
Previously on November 5, 2014, electronic filing of applications for the registration of national trademarks and designs through an online application was launched.
SIPO electronic filing system is currently available only in Slovenian language and is accessible at http://www.uil-sipo.si/uil/dejavnosti/e-vloge/
Source: www.uil-sipo.si Mar 18, 2015 (Newsletter Issue 4/15)
Accession to Geneva Act of the Hague Agreement
On February 13, 2015, the government of Japan deposited its instrument of accession to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs with the Director General of the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Act will come into effect for Japan on May 13, 2015, three months after the deposit.
Source: www.jpo.go.jp
Feb 25, 2015 (Newsletter Issue 3/15) “Class Heading Covers All” Approach AbolishedThe Serbian PTO explained that in 2014 it made significant efforts to harmonize its practice with practices of other national offices in the EU, singling out the abolishment of the “class heading covers all” approach as the most significant change. The amendments to the methodology for various proceedings before the Serbian PTO, including this change, came into force on January 1, 2015.
Namely, national trademarks will not be registered under the “class heading covers all” approach but under the “means what it says” approach, meaning that the national trademark applicants listing class headings will have coverage only for those goods or services which unambiguously fall under the class headings, whereas some of the general designations under these headings will have to be specified or otherwise refused protection.
The PTO has identified 11 general indications of goods/services (in IC 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45) that are not considered sufficiently clear and precise.
For more information, please see here
Source: www.petosevic.com Feb 25, 2015 (Newsletter Issue 3/15)
Joined Eurasian Economic Union
Armenia became a member of the Eurasian Economic Union (EEU) on January 2, 2015, after Russian President Vladimir Putin signed on December 23, 2014 a law ratifying the agreement on Armenia’s accession.
The agreement envisages that Armenia joins the EEU Treaty and other international agreements signed within the frames of the Customs Union of Belarus, Kazakhstan and Russia. Armenia will have to amend its tariff commitments as member of the World Trade Organization, while the EEU’s Common Customs Tariff (CCT) will also have to be revised.
According to the EEU Treaty, Armenia will have one to eight years to harmonize its import duties in accordance with the CCT rates, one to five years to implement the Customs Union’s technical regulations, and three years to adjust the IP-related issues.
Source: www.petosevic.com
Feb 25, 2015 (Newsletter Issue 3/15)
Official Fees Changed
On December 10, 2014, the Estonian Parliament adopted amendments to the State Fees Act, which, among other things, amends the official fees applied by the Estonian Patent Office.
According to the new State Fees Act, all official fees below EUR 100 were rounded up to the nearest Euro (e.g. EUR 31.95 rounded up to EUR 32.00), while all official fees above EUR 100 were rounded up to the nearest EUR 5 (e.g. 140.60 rounded up to EUR 145.00).
The new official fee for filing a trademark is EUR 145 for one class and EUR 45 for each additional class. The registration fee is EUR 45.
The new fees entered into force on January 1, 2015.
Source: www.petosevic.com
Feb 25, 2015 (Newsletter Issue 3/15)Methodology for Trademark Examination AdoptedThe Institute for Intellectual Property of Bosnia and Herzegovina has adopted the Methodology for trademark examination which begins to apply from January 1, 2015.
This methodology explains practical implementation of the provisions of the Trademark Law and the Regulations on the Procedure for the Grant of a Trademark. It also serves as an instruction with clarifications and practical examples for conducting procedures before the Institute for Intellectual Property relating to trademark protection.
The methodology can be seen in the local language here
Source: www.ipr.gov.ba Feb 25, 2015 (Newsletter Issue 3/15)New Industrial Property Act PassedThe Seychelles Parliament recently passed the new Industrial Property Act 7 of 2014, which makes important changes in respect of the protection of Trade Marks, Industrial Designs and Patents. The new Act will come into force from March 1, 2015.
Most significant changes are:
- The registration of defensive marks has fallen away under the new Act
- Collective marks, three dimensional marks, geographical indicators and trade names have been added
- Trademarks are valid for a period of 10 years from the filing date of the application
- Trademarks are renewable for consecutive periods of 7 years
- A 6 month grace period is allowed for the renewal of a registration, along with the payment of a penalty fee
- One exception to the duration of registration is that the term of a registered geographical indication will be indefinite, provided that the specific characteristics, quality or reputation which were the basis for the grant of protection continue to exist
- A registration will become vulnerable to cancellation where it has not been used by the registered owner or a licensee for an uninterrupted period of 3 years
- Direct trade mark infringement is provided by the new Act in the case of identical or similar marks and identical or similar goods or services where there is a likelihood of confusion, but also provides for protection against dilution of well-known marks
- A likelihood of confusion shall be presumed in the case of use of an identical mark for identical goods or services
- Allowance for use of a registered mark in comparative advertising, provided that use of the mark is not of such a nature as to deceive the public and does not constitute unfair competition.
For more information on the Industrial Property Act 7 of 2014, please click here
Source: www.adamsadams.com Feb 25, 2015 (Newsletter Issue 3/15)
New Trademark Form
The Algerian Trademark Office offers a new trademark form to ease the filing process from March 1, 2015.
For more flexibility and speed in the management of protection claims, a code will be generated automatically assigned to the requests of IP owners and will appear in print, on the header of the completed forms.
Please be advised that the forms without a code will not be accepted.
Source: www.inapi.org
Feb 25, 2015 (Newsletter Issue 3/15)E-Payment Now PossibleThe Austrian Patent Office offers the possibility of an e-payment when filing trademark applications online starting from January 1, 2015.
For more information, please see here
Source www.patentamt.at Feb 25, 2015 (Newsletter Issue 3/15)Electronic Case File for Trademarks Soon AvailableThe German Patent and Trade Mark Office (DPMA) has announced that electronic case files for trademarks and geographical indications will be available on March 23, 2015.
It is expected that the introduction of the electronic case file will increase the processing and notification times.
The transition phase started on February 23, 2015. Limitations may occur when using the online services during this phase. For more information please click here
Source: www.dpma.de Feb 25, 2015 (Newsletter Issue 3/15)
New Bank Details of Sakpatenti
Pursuant to amendments to the Budget Code of Georgia, the bank details of the National Intellectual Property Center of Georgia (Sakpatenti) have changed. As of January 1, 2015, please use the following bank details for interactions with the office:
Identification code - 203831363
Beneficiary’s bank - State Treasury;
Beneficiary’s name - Unified Account of Treasury;
Bank code -TRESGE22;
Account number/Treasury code (GEL) -707807132
Please note that all earlier bank accounts of Sakpatenti are invalidate. For additional information, please contact the office under info@sakpatenti.org.ge
Source: www.sakpatenti.org.ge
Jan 28, 2015 (Newsletter Issue 2/15)New Law on Industrial Property IssuedA new Industrial Property Law (No. 23-13) has been issued in Morocco to amend the law (No.17/97) related to Industrial Property. The said Law entered in force on December 18, 2014 and provides for the protection of industrial property rights in accordance with international standards in the field of industrial property. The new Law entered into force on the date of publication in the Official Gazette on January 15, 2015.
The new Law aims to strengthen the protection of industrial property taking into consideration the continuous change that characterized the protection of the rights related to industrial property. Main features of the new Law are summerized as follows:
- Prior substantive examination for trademarks, designs and patents applications is now required.
- A new opposition procedure entered into effect.
- The Customs administration is now entitled to block suspected counterfeited goods not only for importation but also for exportation and in transit.
- It will now be possible to file divisional applications either for patents, trademarks and designs and models, possibility to delay the disclosure of a design & model.
- Licensing and assignments allowed for pending applications.
- New duration of design & model rights.
- It will be possible to any interested third parties to oppose a trademark on absolute grounds, calculation of deadlines before the PTO.
Moreover, major changes were made regarding the improvement of the invention patent system, the consolidation of the national trademark system, the reform of the national system of industrial designs and the enforcement of IP rights.
Source: JAH & Co. IP, Qatar and www.agip.com Jan 28, 2015 (Newsletter Issue 2/15)
Claiming Priority Possible Now
The Kuwaiti Trademark Office announced that priority claims would be available for trademark applications in Kuwait as from January 1, 2015.
The trademark applicants will be able to claim priority (within the six-month priority period) from corresponding applications filed in any of the other member states of the Paris Convention.
As for priority documentation, the Kuwait Trademarks Office will submit a certified copy of the priority application legalized up to Kuwaiti Consulate along with Arabic sworn translation certified by the Translation Department at the Ministry of Justice in Kuwait. Such document can be filed within three months of the date of filing the application.
Source: www.agip.com
Jan 28, 2015 (Newsletter Issue 2/15)
Official Fees Revised
The Algerian Trademark Office revised the official fees for filing trademark applications in colours and for responding to office actions.
The new official fee of filing a trademark application is DZD 16,000 in one class in black & white and DZD 17,000 in colour. The official fee for each additional class is DZD 2,000.
The new rates are effective as of January 1, 2015 and will be applicable on new, as well as, pending applications.
Source: www.sabaip.com and www.agip.com
Jan 28, 2015 (Newsletter Issue 2/15)Official Fees IncreasedThe Turkish Patent Institute ("TPI") has announced its 2015 tariff schedule for trademark prosecution work. This year, the TPI has introduced different fees for online and physical filings. The increased fees are applicable as of January 1, 2015.
The official fee for a trademark application is TRY 255 in paper and TRY 180 online per class. The fee for each additional class remains the same, TRY 255 in paper and TRY 180 online. The issuance of a trademark registration certificate (regardless of the number of classes) is TRY 625 in paper and TRY 520 online.
Source: Istanbul Patent & Trademark Consultancy Ltd., Turkey Jan 28, 2015 (Newsletter Issue 2/15)Changes to Trademark Rules of PracticeThe United States Patent and Trademark Office (‘‘Office’’) is revising the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to benefit the Public by providing greater clarity as to certain requirements relating to
- representation before the Office
- applications for registration
- examination procedures
- amendment of applications
- publication and post publication procedures
- appeals, petitions
- post registration practice
- correspondence in trademark cases
- classification of goods and services
- procedures under the Madrid Protocol
For the most part, the rule changes are intended to codify existing practice.
This rule is effective February 17, 2015.
For more information, please check the announcement and the Rules of Practice.
Source: www.uspto.gov Jan 28, 2015 (Newsletter Issue 2/15)
New E-Filing System for Trade Marks Madrid Export Applications
A new e-filing system called International Registration Process Integration (IRPI) has been developed by the World Intellectual Property Organisation (WIPO) in association with IP Australia for filing Trade Marks Madrid Export applications.
This system will cater for all new applications filed online under the Madrid Protocol. It is anticipated to go live on March 14, 2015. IRPI will be available through IP Australia’s eServices portal and will replace the current option which is located within the General eServices request form.
Source: www.ipaustralia.gov.au
Jan 13, 2015 (Newsletter Issue 1/15)
New Trademark Examination Guidelines
On December 9, 2014, the Brazilian Patent and Trademark Office (BPTO) published Resolution No. 142/2014 ("Resolution") in its Official Gazette, No. 2292. The Resolution consolidates various trademark regulatory sources focused on the application of the provisions of Brazilian Intellectual Property Law (Law No. 9.279/96 – BIPL) and establishes a new Trademark Examination Guidelines Manual ("Manual"), which revokes the current guidelines as well as Resolutions Nos. 027/2013, 028/2013, 032/2013 and Normative Instruction No. 001/2013.
The objective of the Resolution is to guarantee quality, transparency and uniformity in trademark analysis, and facilitate the dialogue between the examination and appeal procedures.
Among several changes, under the new Manual, it is now possible to modify a trademark application after it has been filled in cases of error, and new procedures have been introduced, especially regarding the substantive examination of applications, creating specific guidelines for assessing the distinctiveness of certain designs allowing for the registration of a combination of previously registered marks in which the word element cannot be registered, and of commonly used terms when combined, forming a distinctive trademark.
Requests that contain reproduction or imitation of a geographical indication shall not be automatically refused; instead, requirements for the registry shall be presented by the BPTO and met by the applicant. The same procedure shall be applied when applications contain elements that cannot be registered, allowing the applicant to modify such element.
According to the Manual, in cancellation proceedings, the legitimate interest of the applicant and fiscal and printed notes as evidence shall be evaluated. If there is trademark collision, the existence of annotations regarding trademark terms shall not automatically prevent the evaluation of any confusion.
Source: Tauil & Chequer Advogados, Brazil
Jan 13, 2015 (Newsletter Issue 1/15)Trademark Office Resumes its ActivitiesThe Libyan Trademark Office has resumed its normal activities of accepting new applications and processing of trademarks in general.
Requirements for filing a trademark application in Libya are:
- A power of attorney which should be signed and notarized by the trademark owner and legalized up to the Libyan Consulate in the owner home country.
- An extract of the entry of the applicant company in the Commercial Register (Certificate Incorporation) legalized up to the Libyan Consulate.
- The Name, address, nationality, and business of the applicant.
- 10 prints of the trademark.
- If priority is to be claimed, a certified copy of the priority document issued from a country member of the Paris Convention should be submitted upon filing with other required documents.
Source: JAH & Co. IP, Qatar Jan 13, 2015 (Newsletter Issue 1/15)Official Fees ReducedThe USPTO has issued a notice reducing certain trademark fees. As of January 17, 2015, the filing fee for new electronic applications will be reduced by USD 50 to USD 225 per class. The filing fee for a renewal application will be reduced by USD 100 to USD 300 per class.
For further information on reduced fees and TEAS application filing options, please click here
Source: www.uspto.gov Jan 13, 2015 (Newsletter Issue 1/15)
Accession to the Madrid Protocol
On December 11, 2014, the Government of Zimbabwe deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”). The Madrid Protocol will enter into force, with respect to Zimbabwe, on March 11, 2015.
Source: www.wipo.int
Jan 13, 2015 (Newsletter Issue 1/15)Official Publication and Search Fees IncreasedThe Syrian Ministry of Interior Trade and Consumer Protection has issued Decision No. 1999 on November 13, 2014 stipulating an increase in the official publication fees and search fees of all Intellectual Property matters as of January 1, 2015.
Such an increase will be applied to publications fees of trademarks/designs applications and renewals as well as the recordals thereof.
The new official fee for publication (covering up to 10 items of the list of goods) is USD 150. Extra publication fee for each additional 10 words of the list of goods is USD 8.
Source: JAH & Co. IP, Qatar and www.agip.com Jan 13, 2015 (Newsletter Issue 1/15)The Nice Classification, Tenth Edition, Version 2015 Became EffectiveAs of January 1, 2015, the Nice Classification, Tenth Edition, version 2015 (NCL 10-2015), became effective. Changes to the class headings and a link to noteworthy changes are available here.
To see a comprehensive list of all the new or changed entries, on or after January 1, 2015, please use the following search strategy in the USPTO’s ID Manual: “20150101” or search by the “Effective Date” field in IDM-NG.
Source: www.uspto.gov Jan 13, 2015 (Newsletter Issue 1/15)Indian Design Act AmendedOn January 1, 2015, the Indian Patent Office (IPO) published a notice regarding the amendment in Design Rules which has been effective from December 30, 2014. The said rules are available on the official website of Department of Industrial Policy and Promotion (DIPP) and Controller General of Patents, Designs and Trade Marks.
According to the amended Act, a revised fee structure has been provided for filing of design application as well as other proceedings under the Designs Act.
Further, two main categories of applicants for designs have been introduced as 'natural person' and 'other than natural persons(s). This has been further categorized into 'small entity'; and 'others except small entity'.
For more information, please click here
Source: S. S. Rana & Co., India Jan 13, 2015 (Newsletter Issue 1/15)Trademark Law AmendedThe Trademarks (Amendment) Act, 876 of 2014 came into force on July 25, 2014. It amended the existing Trademarks Act, 664 of 2004. The reason why it becomes public now is that it seems to have been shrouded in secrecy – to the extent that even the Registry was unaware of its publication.
The most noteworthy change is that the Madrid Protocol has now officially been incorporated into Ghanaian law. In fact, Ghana alread signed up to the Madrid Protocol on June 16, 2008, but, as Ghana is a common law country, the agreement only became part of domestic law once it was formally incorporated. As there is nothing in the Amendment Act to suggest that it has retrospective effect, doubts about IR covering Ghana that predate the effective date July 25, 2014, remain.
For further information, please check the news from Spoor & Fisher here
Source: Spoor & Fisher, South Africa Dec 09, 2014 (Newsletter Issue 19/14)Official Fees AmendedThe Orders No. 2014 and No. 2015 regulating the amendment of official fees for designs and trademarks came into effect as of 9 October 2014.
They were published in the Official Gazette of the Republic of Vanuatu No. 80 dated 22 October 2014.
For more information please check here
Source: www.dailypost.vu and Source: AJ Park, New Zealand Dec 09, 2014 (Newsletter Issue 19/14)Filing Without the Complete Documents PossibleThe Bahraini Trademark Office declared on 18 November 2014 under directives numbered MS/14/34-1 that as of the said date onwards it is permitted under the practice of the Bahraini Trademark Registrar to file trademark applications and obtain filing number and date as well as the official filing certificate without the complete required documents which can be submitted within a non-extendable term of three months from the date of filing; or else their applications will be declared abandoned.
Source: JAH & Co. IP, Qatar Dec 09, 2014 (Newsletter Issue 19/14)Filing of Sound Marks are Possible NowThe Bahraini Trademark Office at the Directorate of Industrial Property with the Ministry of Industry and Commerce will start the acceptance of filing sounds trademark as per directives issued under circular number 14/23-3 on 18 November 2014 as of that date.
The requirements to file a sound mark are:
1. Musical note composing of the sound mark written clearly;
2. Compact Disk containing the musical note recited in MP3 audio format or any other compatible format;
3. A power of attorney with appostille certification;
4. A copy of certificate of incorporation and extract from the commercial register of the applicant company.
Sound trademarks will be examined in the same manner as traditional trademark applications and will be subject to trademark law of Bahrain No. 11 of 2006 concerning standard trademarks. A modified trademark application format has be created for the purpose of filing sound trademarks.
On examination and acceptance of sound trademarks the mark will be published in the Official Gazette with the musical composition printed in the space specified for the traditional trademark print with an indication that any interested party might resort to the Directorate of Industrial Property for obtaining a copy of the compact disk for opposition purposes. A registration certificate of the sound mark will be due for issuance upon expiry of the opposition term.
A sound trademark will dealt with as a traditional trademarks as to official fees and procedures of registration in accordance with the Bahraini Trademarks Law No. 11 of 2006.
Source: JAH & Co. IP, Qatar Dec 09, 2014 (Newsletter Issue 19/14)Changes to International Registration ProceduresThe Benelux Intellectual Property Office (BOIP) has announced on its website that several changes to international trademark registration procedures enters into force on 1 December 2014.
These changes have arisen as a result of the BOIP's decision to no longer process requests for modifications, territorial extensions and the renewal of international trademark registrations. Most of the procedures relating to the international register are automated. The BOIP's involvement is not necessary, and may even be inefficient and delay the process. Applications for the above should be submitted directly to WIPO's website effective 1 December 2014 by completing one of the online forms.
There are, however, cases in which intervention by BOIP is necessary. This is the case for cancellations ordered by a court and for modifications (transfers, licenses, rights of pledge and attachments) that are requested by a party other than the registered holder. Such requests, which are in any case exceptional, must be filed via BOIP.
The appropriate WIPO form needs to be completed and must be sent to BOIP (preferably using our contact form), together with the necessary supporting documents and an explicit statement that due to the nature of the request it cannot be submitted directly to WIPO.
Trademark holders will still be able to find all the relevant information about renewals, modifications and the extension of your international registration, including direct links to the relevant WIPO services, on the BOIP's website.
BOIP's Information Centre can be contacted in case of questions.
Source: www.boip.int Nov 25, 2014 (Newsletter Issue 18/14)
INPI Creates a New Registry of Licenses
The National Institute of Industrial Property (INPI), by means of Resolution No. 117/2014 of 9 June 2014, has created a new registry of licenses for patents, trademarks, utility models, industrial models and designs, and technology transfer agreements. The registry will be administered by the Technology Transfer Department of INPI.
Registration of license agreements with the registry is voluntary. A registered license agreement will become enforceable vis-à-vis third parties, and, as from the registration date, any third party will be considered to be aware of the existence of the license agreement.
In accordance with Resolution 117/2014, the registry will be applicable to license agreements executed between local residents as well as between Argentine licensors and foreign licensees. Moreover, the authorities have unofficially clarified that the registry will also be applicable to license agreements executed between foreign residents, although no formal amendment to the Resolution has been issued yet.
The creation of the registry supplements the registration of license agreements under the Technology Transfer Law (Law 22.426 of Mar. 12, 1981), which governs the licensing or transfer of technology, including licensing of trademarks, patents, industrial models and designs, and know-how, only from a foreign resident to an Argentine resident, and which grants a special tax treatment in connection with the payment of royalties.
Source: INTA Bulletin, Vol. 69 No. 21 of 2014. Contributor: Marval, O’Farrell & Mairal, Buenos Aires and verifier: Estudio Gold, Buenos Aires
Nov 25, 2014 (Newsletter Issue 18/14)Regulation of Well-known TrademarksThe Regulation on Well-known Trademark of Mongolia has entered into force from 1 July 2014. Legal entities or personnel have now the right to apply to the Dispute Resolution Commission of the Intellectual Property Office of Mongolia (IPOM) for the recognition of well-known trademarks if the mark meets certain requirements.
Source: GN & CO., Ltd., Mongolia
Nov 25, 2014 (Newsletter Issue 18/14)
Specialised IP Court Starts Operation
China has launched its first specialised court for adjudication of intellectual property-related matters - the Beijing Intellectual Property Court (BIPC). With BIPC's commencement of operations on 6 November 2014, the intermediate courts of the Beijing municipality no longer accept any IP-related civil and administrative cases.
However, for a case, as of 5 November 2014, which has been filed with an intermediate court in Beijing but has not yet been concluded, or whose filing is pending after relevant materials have been submitted to an intermediate court in Beijing, it will continue to be handled by the respective intermediate court.
Beijing's history of hearing IP cases dates back to 1993 when the country's first IP tribunal was set up within Beijing First Intermediate People's Court. By now all of the three intermediate courts in Beijing have their respective IP tribunals.
The establishment of BIPC was in accordance with a decision promulgated by the Standing Committee of the National People's Congress of China on 31 August 2014. Two IP courts are expected to open, one in Shanghai and the other in Guangzhou, by the end of this year.
Source: China Patent Agent (HK) Ltd, China
Nov 25, 2014 (Newsletter Issue 18/14)
Batch Examination Available
The Korean Intellectual Property Office (KIPO) recently announced that batch examination is now available for all types of IP application. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to the applicant's designated timeline. Through batch examination, the applicant can seek the examination of multiple applications within a unified examination timeframe, which can be set according to the applicant's request. Applications that qualify for batch examination include trademark applications and design applications as well as patent and utility model applications.
Source: Kim & Chang Intellectual Property, South Korea
Nov 25, 2014 (Newsletter Issue 18/14)E-Filing Now ImplementedThe Slovenian Intellectual Property Office (SIPO) allows as of 5 November 2014 electronic filing of applications for the registration of national trademarks and designs through an online application, which was developed in close cooperation with OHIM - Office for Harmonization in the Internal Market (Trade Marks and Designs).
SIPO electronic filing system is currently available only in Slovenian language and is accessible at http://www.uil-sipo.si/uil/dejavnosti/e-vloge/.
Source: www.uil-sipo.si Nov 25, 2014 (Newsletter Issue 18/14)Draft Provisions on Trail of Administrative Trademark-Related CasesOn 15 October 2014, the Supreme Court of PRC published "Provisions of the Supreme Court of PRC on several issues concerning the trial of administrative cases about granting and determination of trademark right (draft for comments)" for one month long public comments.
There has been a substantial increase in the number of this type of cases. In order to clarify and unify the hearing standard, the Supreme Court of PRC, on the basis of deep research and seeking advice from other sources, made the Draft.
For further information, please see the article from our Country Index Gold Partner Peksung here.
Source: Peksung Intellectual Property Ltd., China Nov 25, 2014 (Newsletter Issue 18/14)F-Filing for Designs Now ImplementedThe Spanish Patent and Trade Mark Office (OEPM) has implemented e-filing for designs, developed under the framework of OHIM's Cooperation Fund.
E-filing for designs offers a simple and intuitive online registration process, making the design application process easier and quicker for users.
The new OEPM e-filing system is available at here
Source: www.tmdn.org Nov 11, 2014 (Newsletter Issue 17/14)
Use of Trademarks Mandatory Now
On 7 October 2014 Decree No. 277/2014 has been published. The same regulates Law No. 19.149 effective since 1 January 2014, concerning to the mandatory use of trademarks in Uruguay.
According to sections 187 to 189 of the previously mentioned law the use of trademarks is mandatory in Uruguay and cancellation actions may be filed as of 1 January 2019.
As consequence, trademarks in Uruguay can be cancelled for non-use before the National Office of Industrial Property in the following cases:
A) When a trademark had not been used by the owner or other authorized person within five years following the granting date or the renewal date or
B) When the use was interrupted for more than five years
The law does not provide for partial cancellation. It meets the requirement to use when any of the products or services included in the trademark are commercially available in Uruguay, in the amount and manner normally appropriate, considering the size of the market, the nature of the products or services in question and its forms of marketing.
In addition, the use of a trademark in relation to goods to be exported from Uruguayan territory, or services rendered abroad, from Uruguay will also suffice the requirements of use.
Finally, the use of the mark as a trade name registration preserves the trademark as long as the same is used on products, their packaging or in a way directly related to those protected by the trademark registration services.
Use of the mark must be public and effective and the proof thereof corresponds to the titleholder.
Source: Fernandez Secco & Asociados, Uruguay
Nov 11, 2014 (Newsletter Issue 17/14)E-Filing now PossibleThe Trademark Office of Greece has implemented e-filing for trade marks, a tool developed under the framework of the Cooperation Fund in collaboration with OHIM.
The new e-filing system offers an online registration process that makes trademark applications easier, quicker and more accessible. All users of the Greek trademark system will benefit from this.
The succesful implementation of the new e-filing system is a result of the collaborative work between the Greek Trademark Office and OHIM experts.
Source: www.oami.europa.eu Nov 11, 2014 (Newsletter Issue 17/14)Trademark Manual of Examining Procedure UpdatedThe USPTO issued the October 2014 Update of the Trademark Manual of Examining Procedure (TMEP) on 30 October 2014. It incorporates USPTO trademark practice and relevant case law reported prior to 1 October 2014. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
To access the October 2014 TMEP Highlights please click here
For a listing of all the changes, please access here
Source: www.uspto.gov Nov 11, 2014 (Newsletter Issue 17/14)
Early Trademark Registrations to Be Renewable
The Government of the Republic of Burundi has recently clarified that trademark registrations existing before the current Industrial Property Law came into force on 28 July 2009 need to be renewed for ten-year terms with effect from 28 July 2019 and indefinitely thereafter for successive ten-year terms.
The current Burundi Industrial Property Law came into force on 28 July 2009 (the Effective Date). Trade mark registrations made after the Effective Date have 10-year terms from the filing date, indefinitely renewable for like terms. The 2009 Law repealed earlier trade mark law, under which trade marks were registered for indefinite terms.
The transitional provisions of the 2009 Law were originally interpreted to mean that trade marks, registered before the Effective Date for indefinite terms, did not become subject to renewal and would remain in force indefinitely, unless/until annulled or cancelled, for instance on grounds of non-registrability or non-use.
Now, it has been officially announced that those pre-existing trade mark registrations are to be renewable for ten-year terms with effect from 28 July 2019, and indefinitely thereafter for successive ten-year terms.
It is not yet stated what the earliest and latest dates will be for owners to apply for such renewals.
Source: www.spoor.com
Oct 28, 2014 (Newsletter Issue 16/14)
Amendments to the Korean Trademark Act
Amendments to the Korean Trademark Act ("TMA") have been published on 11 June 2014, which are effective immediately. The amendments apply to marks filed on or after 11 June 2014.
1. Secondary meaning easier to prove
The previous TMA permitted registration of trademarks lacking distinctiveness if the mark had acquired secondary meaning, but the applicant was required to show that consumers would easily recognize the trademark as a source identifier. The amendment lowers this standard by deleting "easily" from the TMA, in order to respect the goodwill of trademarks that may already function as source identifiers in the marketplace.
2. Marks that may cause dilution are denied registration
Trademarks that create consumer confusion with famous marks already are not allowed to be registered under the TMA. However, the amendment further prevents the registration of marks that may potentially dilute the distinctiveness and/or reputation of a famous mark.
3. Unfair applications are denied registration
The amendment also specifically denies registrations for applications filed for a mark which is identical or similar to a third party's mark in connection with identical or similar goods, despite knowledge that the third party is using or planning to use the mark pursuant to a partnership agreement, employment relationship, business transaction, or other relationship.
4. Reflection of changes in unfair competition law
As of 31 January 2014, the Unfair Competition Prevention and Trade Secret Protection Act adopted a "catch-all" provision, designed to prevent a party from infringing a third party's economic interest by using (through a method that contravenes fair trade practice or competition order) that third party's product for business purposes without authorization, where the third party's product was the result of considerable effort and investment.
The amendment to the TMA prevents use of a registered mark by a registrant and/or licensee without consent of the third party, if use of the registered mark falls within the scope of the above UCPA "catch-all" provision. Further, the registered mark can be cancelled within five years from the registration date for violating the "catch-all" provision if a cancellation action is filed by the party whose economic interests are being infringed.
Source: Kim & Chang, South Korea
Oct 28, 2014 (Newsletter Issue 16/14)New Trademarks and Designs E-Filing SystemFrom 30 September 2014, the submission of the trademarks and designs applications and other related documents can be filled through the newly amendment electronic system of the State Patent Bureau of the Republic of Lithuania (SPB). A new system allows to fill the applications and send other documents and communications more easily and faster.
Together with the new system the electronic services have been extended; now the applicant can not only submit the application for registration of a new IP right, but also can make requests for other actions, review the status of the documents, find the history reports.
Electronic applications, signed by the person or his representative, have the same legal effect as paper-based documents. SPB issued documents will also be submitted electronically and signed with an electronic signature. For the submission of electronic documents, no special electronic equipment is required. The electronic application can be made via the SPB secure access website www.vpb.gov.lt or e-government gates www.epaslaugos.lt
Applicants are given the opportunity to take advantage from electronic classification of goods or services, the system ensures the good quality of images in the applications.
E-filling system is designed and implemented in collaboration with the Office for Harmonization in the Internal Market (OHIM) under the Cooperation Fund program.
Source: www.vpb.gov.lt Oct 28, 2014 (Newsletter Issue 16/14)Clarification on Declaration of Intention to UseThe Trademarks Registry has issued a notification in the Industrial Property Gazette on 15 August 2014 to clarify the issues raised within the scope of the declaration of intention to use (DIU) regarding to trademarks and in order to standardize the terms for the filing thereof the following is made aware:
1) The provision of no.1 of article 127 of the Mozambique Industrial Property Code (CPIM) Enacted by the Decree no.4 / 2006 of April 12, shall be constructed in the sense that for national trademarks, the calculation of the 5 years period for the filing of the first DIU commences from the registration date thereof. For the purposes of this notice, the registration date is regarded as the filing date of the trademark at IPI.
2) Regarding to an international trademark which at the registration date at the international bureau of WIPO, Mozambique was designated as one of the countries where protection must be extended to and that registration was granted in Mozambique, the no. 2 and 3 of the article 137 read in conjunction with no. 1 and 2 of article 127 of aforementioned law, shall be constructed in the sense that the first DIU shall be filed 5 years after the registration thereof at the international bureau of WIPO.
3) According to the provision of no. 3 of article 137. For an international trademark which the extension thereof to Mozambique is subsequent to its international registration and that registration was granted in Mozambique, the first DIU shall be filed after the completion of 5 years of the subsequent extension in Mozambique ("date de designation posterieure"/"date of subsequent designation") as set out by the international bureau of WIPO.
4) For the purposes of numbers 2 and 3 of this notice, and in order to standardize the different dates of the international trademarks, the IPI communicates that it will take as a base date for the calculation of the term for the filing DIUs of international trademarks, the date of notification of the application for registration in Mozambique ("date de notification/date of notification").
5) For the international trademarks, the calculation of the term for the filing of the second and subsequent DIUs commence from the renewal date which follows the extension.
6) In situations that the filing of the DIU is prior the renewal, it is mandatory to file it, but if the filing of the DIU is subsequent the renewal, the DIU shall be filed five years after the renewal date.
7) When the DIU overlaps with the renewal, there is no need to file the DIU.
The aforementioned provisions are to be in force immediately.
Source: JAH & Co. IP, Qatar
Oct 28, 2014 (Newsletter Issue 16/14)Trade Mark Practice Guidelines ChangedIPONZ has made minor updates to the trade marks practice guidelines. The updates, relating to assignments, bring the practice more in line with international counterparts.
- Read the practice guideline 20. Assignments and transmissions here
- View the superseded practice guidelines section here
Source: www.iponz.govt.nz Oct 28, 2014 (Newsletter Issue 16/14)
Official Fees Increased
The Icelandic Patent Office has announced on its website the new Regulation no. 804/2014 on fees for patents, trademarks, designs, etc. which has been adopted by the Minister of Industries and Commerce. The new regulation is effective on 1 December 2014.
The official fee for filing a word mark is ISK 28,000.00 (approx. EUR 183.00) for one class and ISK 6,000.00 (approx. EUR 39.00) for each additional class.
Source: www.els.is
Oct 28, 2014 (Newsletter Issue 16/14)
Trademark Registration Speeded Up
As a result of Administrative Resolution No. 48348 of 2014, issued by the Superintendence of Industry and Commerce, any person in Colombia interested in filing an application for registration of any distinctive sign will now be able to obtain registration in about four months.
Previously, trademarks were not granted registration in less than six months from the application date. This was mainly a reflection of a very strict interpretation of the intellectual property laws in force in Colombia. According to the CTO’s interpretation of the Paris Convention and Decision 486 of the Andean Community, a trademark registration could not be granted in less than six months because, within that period, a third party could file an application in Colombia claiming its right of priority based on an application previously filed in another contracting state.
The CTO implemented Administrative Resolution 48348, which would allow a reduction in the average time for trademark prosecution in Colombia to four months without affecting the right of priority of other applicants, who could still claim their right of priority within the six-month period.
Source: Cavelier Abogados, Bogota and Romero Raad Abogados, Bogota in INTA Bulletin Vol. 69 No. 19, 15 October 2014
Oct 28, 2014 (Newsletter Issue 16/14)
Issuance of Electronic Certification
Resolution No. 136/2014, which refers to electronic certificate of registration was approved by the BPTO and became effective on 30 September 2014.
Pursuant this new resolution, all certificates of registration will be issued, exclusively, in digital format, upon electronic signature of the Certification Authority.
This new rule is also valid for pending certificates of registrations, duplicates and renewal certificates.
Therefore, as of 30 September 2014 on, all Certificate of registrations issued in digital format will be available on the BPTO’s website, through protected password and under its control and monitoring.
Source: Di Blasi, Parente & Associates, Brazil
Oct 14, 2014 (Newsletter Issue 15/14)Accession to the Paris ConventionKuwait has acceded to the Paris Convention for the Protection of Intellectual Property on 2 September 2014 becoming the 176th country of the said Convention which will enter into force on 2 December 2014. As of this date applicant of trademarks can claim priority for trademarks under Paris Convention.
As for trademarks, the Kuwaiti Trademark Office has still not clearly defined the requirements for submission of the priority document. A certified copy will be the standard procedure but the time frame for filing the document has not been defined yet. Now and according to the present practice of the trademarks office it is not necessary to submit all relevant documents at the time of filing. The documents can be filed later at no time limit.
Source: JAH & Co. IP, Qatar
Oct 14, 2014 (Newsletter Issue 15/14)E-Filing Now AvailableThe Latvian Patent Office has launched the Trademark online filing system on the official web site of the Patent Office as of 29 September 2014, which provides the opportunity of submitting trademark application 24 hours per day. The online trademark submission is available at the following link http://www.lrpv.gov.lv/lv/precu-zimes/e-pakalpojumi and requires prior authorization at the portal https://www.latvija.lv
State fee for the trademark filing can also be paid online when filing the application or at a later point of time.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Oct 14, 2014 (Newsletter Issue 15/14)New Procedures for Legalization of PoAThe Ministry of Foreign Affairs and Expatriate at the Syrian Arab Republic set new procedures for the legalization of Power of Attorney.
The Syrian Foreign Ministry now receives and accepts the Powers of Attorney with an earlier signing date up to one year backdate. Thereafter, the Ministry will proceed with forwarding the PoAs to the concerned security departments. The PoA procedures will be as follows:
The Foreign Ministry receives the original PoA giving receipt number and date, and then forwards this document to security departments for approval or rejection. If rejected, the original PoA is retained with the Ministry. If accepted, the PoA is further sent to the Interior Ministry, which in turn, will forward it to other security departments for clearance. Such procedures will take more than 4 months.
However, some powers of attorney do not mention the signing date; as such the one year will be calculated from legalization date by the Syrian consulate abroad.
Source: JAH & Co. IP, Qatar Oct 14, 2014 (Newsletter Issue 15/14)
Accession to Singapore Treaty
WIPO presents its compliments to the Minister for Foreign Affairs and has the honour to notify the deposit by the Government of the Republic of Iraq, on 29 August 2014, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Iraq, on 29 November 2014.
Source: www.wipo.int
Oct 14, 2014 (Newsletter Issue 15/14)
Merge of IP Office and Quality Management Institute
The government of Cape Verde has merged its Quality Management Institute (IGQ) and the Intellectual Property Institute (IPICV) to form the Quality Management and Intellectual Property Institute (“Instituto de Gestão da Qualidade e da Propriedade Intelectual” or only “IGQPI”).
This new office will handle with issues related to industrial property and copyrights and supervise the quality of products and services in Cape Verde.
Source: www.inventa.com
Oct 14, 2014 (Newsletter Issue 15/14)Consultation to Modernize Canada's Intellectual PropertyThe Canadian Intellectual Property Office (CIPO) will be holding an official consultation on the report entitled Modernizing the IP Community from 9 October to 9 December 2014.
As part of the Government of Canada’s efforts to support innovation, significant efforts have been made to better align Canada’s intellectual property (IP) framework with international practices and reduce the administrative burden for Canadian businesses. CIPO has also been working to transform its services to more effectively support businesses’ innovative undertakings. These efforts have coincided with the ongoing interest of the IP agent community to deliver the best services possible to Canadian businesses.
Within this environment, CIPO and the IP agent community recognized the importance of modernizing the way in which they do business together to support the needs of Canadian businesses. A collaborative effort between CIPO and the IP professional community was initiated to examine and develop recommendations in three areas:
1. The maintenance and oversight of the register/list of trademark and patent agents.
2. The qualification and maintenance of patent and trademark agents on the register/list.
3. A values and ethics framework for trademark and patent agents.
CIPO is seeking views to assess the degree to which the recommendations contained in the final report, Modernizing the IP Community, meet the needs of the business community and the IP professional community.
For more details, please see the consultation document. For further information on the latest developments in the field of Canadian Intellectual Property, please access the article of our Canadian partner Joli-Coeur Lacasse Avocats here
For any questions regarding this consultation, please send an email to Konstantinos Georgaras (Email: OPIC-CIPO.consutlations@ic.gc.ca).
Source: www.cipo.ic.gc.ca Sep 16, 2014 (Newsletter Issue 14/14)Re-Validation of IP Rights in CrimeaOn 22 July 2014, the Russian Law regulating IP protection on the territory of the Crimean Peninsula entered into force.
According to the Ukrainian Law on Ensuring Protection of the Rights and Freedoms of Citizens and Legal Regime on the Temporarily Occupied Territory, which entered into force on 9 May 2014, the Crimean peninsula is still regarded as part of Ukraine, with a special legal status as an occupied territory.
Due to this conflict, it is recommended that owners of IP rights that are being executed in Crimea should apply for protection of their IP rights in both countries, Russia and Ukraine.
The deadline for revalidating Ukrainian IP rights (whether re-registering or re-filing) in Russia as well as resolving other IP-related issues is set for 1 January 2015.
For detailed information, please see the article on 'IP Protection in Ukraine and Russia in Light of Crimea Conflict' from our contributor PETOSEVIC here.
Source: www.petosevic.com Sep 16, 2014 (Newsletter Issue 14/14)Use of National SymbolsThe Moldovan State Agency on Intellectual Property (AGEPI) announced on its website that the Law on Approval of National Symbols Associated with Protected Geographical Indications (GI), Protected Appellations of Origin and Traditional Specialties Guaranteed entered into force in Moldova on 25 July 2014. The text of the law is available in Moldovan only.
According to AGEPI, the law and the Regulation on the national symbols prescribe that the symbols can be used free of charge only by natural or legal persons holding the right to use a protected geographical indication or a protected appellation of origin or by natural or legal persons that meet the specifications for a traditional specialty guaranteed. The symbols can be used on products, labels and/or packaging materials, in advertising or in accompanying documents.
The national symbols were selected by the National Commission following a national contest that the Moldovan government had organized.
Source: www.petosevic.com Sep 16, 2014 (Newsletter Issue 14/14)
Non-Traditional Trademarks Soon Registrable
The latest amendment of the Trademark Act in Japan (“Amendment”) was announced on 14 May 2014. There are two important changes in the Amendment. First the amendments would allow new trademarks to be composed of sounds, colours, holograms, motions, or positions ("New Trademarks"). Second, there are three new groups, including non-profit organizations (NPO) that can hold regional collective marks (as reported in our Newsletter Issue 13/14). The Amendment with regards to the New Trademarks will likely enter into force on 1 April 2015.
Under the present law in Japan, registrations of trademarks are limited to characters, figures, signs and three-dimensional shapes, any combination thereof, or any combination thereof with colours. The New Trademarks introduced by the Amendment are sound marks, colour per se marks, hologram marks, motion marks, and position marks. Additionally, although touch marks, texture marks, taste marks, olfactory marks or combinations of New Trademarks (i.e. multimedia marks) have not been added so far, the new law delegates the power to add such marks to the Japanese administrative authority, the Ministry of Economy, Trade and Industries (“METI”). Therefore, no further amendments to the Trademark Act would be required to add these additional types of new trademarks.
The New Trademarks could be registered in Japan through the Madrid System as well.
Source: Hogan Lovells, Tokyo, Japan
Sep 16, 2014 (Newsletter Issue 14/14)
Official Gazettes Soon Published Electronically
The Estonian Paten Office announced on its website that the official gazettes will be published electronically only starting from 1 December 2014 according to Regulation no 26 of the Estonian Ministry of Justice.
Estonian Trade Mark Gazette and Estonian Industrial Design Gazette will be published on the first working day of each month. Estonian Patent Gazette and Estonian Utility Model Gazette will be published on the 15th day (or the first working day after that) of each month.
Source: www.epa.ee
Sep 16, 2014 (Newsletter Issue 14/14)
Trade Marks Office Closed
Following the recent fighting in Libya the Trade Mark Office has closed again.
Source: Spoor & Fisher, South Africa
Sep 16, 2014 (Newsletter Issue 14/14)New Regulations on Well-Known TrademarksOn 3 July 2014, the State Administration for Industry and Commerce (SAIC) published the revised Regulations on Recognition and Protection of Well-Known Trademarks (the Regulations) which replaces the 2003 regulations. It became effective from 2 August 2014.
Article 14 of the new China Trademark Law stipulates the factors to be considered in affirming well-known status of a mark, and it also provides clarification on the venues for asserting well-known mark rights, including China Trademark Office (CTMO), China Trademark Review and Adjudication Board (TRAB), and the relevant courts designated by the Supreme Court of the People's Republic of China.
The Regulations are interpreted in respect of administrative recognition made by the CTMO and the TRAB, under the SAIC. Some important contents are the definition of the well-known trademarks, the venues for administrative recognition of well-known status of a mark, applicable principle as well as clarifications concerning acceptable evidentiary materials.
For further information, please see the article on 'New regulations on recognition and protection of well-known trademarks' from our Gold partner Peksung here.
Source: Peksung Intellectual Property Ltd., China
Sep 02, 2014 (Newsletter Issue 13/14)
More Entities Entitled to Register Regional Collective Trademarks
On 11 June 2014, the Japanese Patent Office (JPO) announced that a “Cabinet Order Specifying the Effective Date of Part of the Act of Partial Revision of the Patent Act” was made public.
The Cabinet Order specifies the effective date of revised provisions of Japan Trademark Act, Article 7-2 (i), (expansion of entities entitled to resister regional collective trademarks). It came into force on 1 August 2014.
According to the revision, in addition to cooperative associations covered by the existing Trademark Act, associations commerce and industry, chambers of commerce and industry, and specified non-profit corporations (NPO) were newly added as entities entitled to register “regional collective trademarks”.
Source: www.harakenzo.com
Sep 02, 2014 (Newsletter Issue 13/14)Notice on Division of ApplicationOn 20 August 2014, the Chinese Trademark Office (CTMO) issued a notice on how a division of application is implemented, when the CTMO has rejected a trademark application in respect of partial designated goods. The notice informs about the following:
- The CTMO will attach a form of Division of Application when it issues Notification of Partial Rejection of Application.
- If the applicant requires a division, the executed Division of Application must be submitted to the CTMO within 15 days of the receipt of the CTMO’s Notification of Partial Rejection of Application. If it is not submitted within the prescribed period, the applicant is deemed to disagree with the division.
- After the division, the application with the provisionally approved items will generate a new application to be published with a new filing number but reserved original filing date; and the original filing number will be reserved for the application in respect of the blocked items due to the partial rejection, for the purpose of appeal proceeding before China Trademark Review and Adjudication Board (TRAB) or other subsequent proceedings.
- Each application for registration can be divided once only in the proceeding of rejection in respect of partial designated goods or services. Division is not applicable in other proceedings.
- There is no official fee for division of application.
- Once filed, the divisional application is irrevocable.
For further information, please see the article on 'CTMO Published Notes on Division of Application' from our Gold partner Peksung here.
Source: Peksung Intellectual Property Ltd., China Sep 02, 2014 (Newsletter Issue 13/14)
New Common Practice on Black & White Trademarks
The Intellectual and Industrial Property Section of the Department of the Registrar of Companies and Official Receiver of the Republic of Cyprus has issued a new practice direction for the purposes of harmonizing the practice of Cyprus regarding black and white or greyscale trademarks with the rest of European Union countries. The new practice direction will apply for all trademark applications filed after 15 July 2014.
Accordingly, trademarks filed in black and white or greyscale are no longer protected in all colours.
The new Practice consists of four parts and determines use of a black and white or greyscale trademark in colour is considered genuine use if the following conditions are met:
1. The colour should not be part of the main element that makes the trademark distinctive.
2. The colour or combination of colours in the trademark is not considered distinctive in itself.
3. The word and figurative elements of the trademark should be the most distinctive elements and should be used in the same way as the black and white or greyscale trademark.
4. The contrast between the shade of the trademark should be respected.
Source: www.agip.com
Sep 02, 2014 (Newsletter Issue 13/14)Non-Use Cancellation May No Longer Be PossibleOn 9 April 2014, the Turkish Constitutional Court has ruled that Article 42/1 (c), which provides for the non-use of a trademark as one of the grounds of invalidity, is unconstitutional on the grounds that it violated Article 91/1 of the Turkish Constitution.
For detailed information, please see the article on 'Non-use Cancellation of Trademarks may no Longer be Possible in Turkey' from our Silver partner Istanbul Patent & Trademark Consultancy Ltd here.
Source: Istanbul Patent & Trademark Consultancy Ltd., Turkey Sep 02, 2014 (Newsletter Issue 13/14)Changes to Design LawThe UK Intellectual Property Act has received Royal Assent. Some of the most interesting changes relate to design law. These include the introduction of criminal sanctions against blatant copying of UK registered designs in the course of business, cheaper options for appeals from decisions of the UK IPO on registered designs, consistency with EU design law on matters such as ownership and prior user rights, and the provision of a UK IPO opinions service on designs, to supplement the existing service relating to patents.
Whilst the Act is now officially law, most provisions will not come into force until 1 October 2014, whilst others will take effect in 2015.
For further information, please see the article on 'UK IP law gets a makeover' from Barker Brettell LLP here.
Source: www.barkerbrettell.co.uk Sep 02, 2014 (Newsletter Issue 13/14)
Official Fees Changed
Since 4 August 2014, the official fee for trademark filing and examination in Azerbaijan is 175 AZN in one class for black & white as well as for colour trademarks.
Before, the official fees for trademark filing and examination have been different for black & white trademarks and colour trademarks.
The rest of the official fees have remained unchanged.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Sep 02, 2014 (Newsletter Issue 13/14)
IP Law Amended
Albania has adopted amendments to the Industrial Property Law aiming to reach a level of IP protection similar to that existing in the European Union. The law No. 55/2014 was published in the Official Gazette on 24 June 2014 and entered into force on 10 July 2014.
The most important changes related to trademarks are:
- Under the amendments, the PTO is to complete the examination of absolute grounds within three months from the application date. If all the formalities are not completed, the PTO will issue a notification giving the applicant a deadline of additional two months, to file additional documents if needed. The publication of the application will follow after the completion of the above.
- The amended law now includes provisions on certification marks, which can be registered according to the rules and regulations set out in the law.
- The law now foresees the cancellation of an earlier trademark filed in bad faith, whereas this legal ground was not included in the previous law.
Source: www.petosevic.com
Sep 02, 2014 (Newsletter Issue 13/14)
Trademark Application Procedures Tightened Up
The Nigerian Registrar of Trademarks (and Patents and Designs) is conducting a campaign to tighten up procedures throughout the Registry.
Under the Regulations, official actions are to be notified in writing, and unless within two months the applicant (or agent) applies for a hearing or makes a considered reply in writing the application shall be deemed to have been withdrawn. For many years that time limit has not been enforced and responses have been entertained after substantial delay. The Registrar has now made it clear that responses, received after the statutory term, will be disregarded and the application treated as abandoned.
The Regulations contain provisions for this time limit, like others, to be extended at the Registrar’s discretion and it is generally accepted law that an authority such as the Registrar must actually exercise her discretion, and may not pre-determine that extensions of time will never be granted. Evidently also, pending applications where responses are already overdue will have to be considered on a reasonable basis.
The above points are under discussion with the Registrar. It is nevertheless noted for general information that, in future, extensions of time beyond the prescribed two months will at best be difficult to secure without very good reasons and (predictably involving hearings), expensive as well.
The good news from Nigeria on the Intellectual Property fron includes:
1) A general strategiy to improve the operations and records in the Industrial Property Office.
2) The enhancement of copright protection.
Source: Spoor & Fisher, South Africa
Sep 02, 2014 (Newsletter Issue 13/14)
Expedited Examination of Trademark Applications Cancelled
The expedited examination of national trademark applications and the corresponding official fee were abrogated on 26 May 2014.
The standard examination timeframe is six months from the date the application is published for opposition and observation purposes. The timeframe for expedited examination was three months from the mentioned publication date.
Source: www.petosevic.com
Sep 02, 2014 (Newsletter Issue 13/14)Official Fees IncreasedThe Controller General of Patents, Designs and Trade Marks (CGPDTM) has issued a public notice informing that the official fee has been increased with effect from 1 August 2014:
1. An application to register a trade mark in one class has been increased from INR 3,500 to INR 4,000
2. Application to expedite examination of a mark has been increased to INR 20,000.
Receipt in deficiency of fees after 30 Spetemper 2014 shall result in shifting of actual date of filing the application to the date of payment of deficiency in fees.
The said notice can be accessed at the following website here
Source: S. S. Rana & Co., India
Jul 22, 2014 (Newsletter Issue 12/14)No Re-Introduction of Fast Track ExaminationThe Intellectual Property Office (IPO) has published the Government response to the consultation on whether to re-introduce the fast track examination for UK trademarks.
The Government decided not to reinstate the fast track service after the outcome of the consultation due to the lack of demand amongst users of the system. The responses that were received outlined that users are content with the routine examination procedure, and associated timescale, which is currently offered by the Office.
To access the response document, please click here
Source: www.gov.uk
Jul 22, 2014 (Newsletter Issue 12/14)
Accession to Locarno Classification
Japan acceded to the Locarno Agreement, an international classification for industrial designs, on 24 June 2014. The said agreement will enter into force with respect to Japan on 24 September 2014.
Source: www.wipo.int
Jul 22, 2014 (Newsletter Issue 12/14)
IPONZ Is Moving
The Intellectual Property Office of New Zealand is moving to the new Ministry of Business, Innovation and Employment building.
From 11 August 2014 the Intellectual Property Office of New Zealand will be situated at:
15 Stout Street
Wellington 6011
New Zealand
There will be no interruption or change to our current services.
Source: www.iponz.govt.nz.
Jul 22, 2014 (Newsletter Issue 12/14)Official Publication Fees soon IncreasedThe Ministry of Industry and Trade will increase the publication fees related to trademarks matters as of 7 August 2014 regarding to a Ministerial Decision No.105 of 2014 pertaining to the publication fees in the official Gazette.
The increase ranges from 40 % to 50 % and concern all trademarks actions which require publication in the official Gazette. Also, this increase will be applied to design and patent registration. Applications filed before the effective date 7 August 2014 will not be subject to the increase occurred in the publication fees.
For more information on the new publication fees, please click here
Source: JAH & Co. IP, Qatar
Jul 08, 2014 (Newsletter Issue 11/14)Practice Change to French PolynesiaA new decree dated on 23 May 2014 came into force further to the cooperation convention concluded between French Polynesia and France for IP matters. The decree implies two important changes:
French trademark attorneys do not need to submit a PoA signed by their clients for any trademark matters. This exemption is applicable for all the regulated legal professions.
In case of extension of protection related to trademark renewals, it is mandatory to get these trademarks formally reconfirmed by the local authorities before the publication date of the renewal. In some exceptional circumstances, it is possible to ask the French Polynesia TMO to postpone the reconfirmation request at a later date subject to state reasons for the same.
Source: Inlex IP Expertise, France Jul 04, 2014 (Newsletter Issue 11/14)Official Fees ChangedThe Intellectual Property Office of Portugal has announced new official fees which are effective from 1 July 2014.
The fee for filing a trademark is now EUR 123.67 online and EUR 247.34 in paper for each class. Each additional class is EUR 31.35 online and EUR 62.70 in paper.
Source: Raul César Ferreira (Herd.), S.A., Portugal Jul 04, 2014 (Newsletter Issue 11/14)Regional INPI Offices No Longer Entitled to Receive FilingsSince 1 July 2014, the regional delegations of the French Industrial Property Institute (INPI) are not entitled to receive any filing anymore. Thus, they also do not have any authority to affix a date of filing or official reception. In consequence, any Trademark applications, renewals, recordals and oppositions shall be submitted at the headquarters of the INPI or electronically or by facsimile with confirmation letter where available.
Source: Inlex IP Expertise, France Jul 04, 2014 (Newsletter Issue 11/14)Changes to Canadian TM Act ExpectedThe new draft law (Bill C-31), encompassing the first major reform of the Canadian Trademarks Act in over 60 years, has now received the Royal Assent on 19 June 2014 and will thus become law without any further amendments.
Major changes have been made to the Law that will enable Canada to ratify, amongst other the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Some of the various changes are expected that may negatively impact trademark protection strategies:
- Proof of use will no longer be required to obtain registration in Canada.
- Trademark protection duration will be reduced from 15 years at the moment to 10 years.
- As the Canadian Government implements the Nice classification, it is highly possible that the Canadian Government will base its government fees on each separate class.
For further information, please access the article of our partner Ms Micheline Dessureault from the law firm Joli-Coeur Lacasse Avocats here
Source: Joli-Coeur Lacasse Avocats, Canada Jul 04, 2014 (Newsletter Issue 11/14)TM Filings Now Possible in South SudanThe Business Registry within the Ministry of Justice in South Sudan is now accepting and processing applications for the registration of trade marks.
In dealing with these, the South Sudan Registry has taken an executive decision to be guided by the Sudan Trade Marks Act of 1969 despite that statute’s official inapplicability to South Sudan. There is still no actual trade mark law in South Sudan or any indication of its proposed date or content. This means that the system in place has no statutory authority.
Trade mark owners may decide to proceed on the pragmatic basis that the process is being conducted by the Ministry of Justice and therefore it is likely the Government will recognise it, to the extent that:
- A certificate issued under the present procedure will be cited against a later application under the same or a subsequent system, so the first to file has the advantage.
- A formal Act, when passed, will ratify what has been done.
- The present certificates may be recognised to some extent in any litigation that may be conducted before a new law is enacted.
The resulting registration is stated to be for ten years from the filing date. It is hoped that proper law and procedures will be implemented within that term, under which the original filing date will be preserved.
For further information, please click here
Source: Spoor & Fisher, South Africa Jul 04, 2014 (Newsletter Issue 11/14)
Official Fees Increased
The Indonesian Directorate General of Intellectual Property (DGIP) announced the introduction of Regulation No. 45/2014 on Official Fees, which is effective from 3 July 2014, onwards.
Under this new Regulation, the official fees for many actions relating to IP prosecution will be increased. As from 3 July 2014, the new official trademark filing fee is IDR 1,000,000 for up to 10 items of goods/services per class, with every subsequent 1-10 items of goods/services exceeding the first 10 items incurring an additional official fee of IDR 1,000,000.
Source: Tilleke & Gibbins, Indonesia
Jul 04, 2014 (Newsletter Issue 11/14)
Revision of TM Files Ongoing
A significant amount of trademark files were destroyed during the course of the Iraq War in 2003. Since then, the Iraqi Trademark Office has organized the revision of these files into separate batches in order account for all the records. The registrar currently examines applications with filing numbers ranging between 54,000 and 56,000. The Iraqi TMO has already completed the revision of the files ranging from 1 to 53999.
There are, however, some delays in processing the applications. Some trademarks are still pending due to heavy backlog and slow routine at the Iraqi TMO. In the event of missing documents, owners will be requested to submit all required documents. Incomplete trademark registrations will be considered abandoned and will not be processed.
Source: Saba & Co. IP – Head Office, Lebanon
Jun 24, 2014 (Newsletter Issue 10/14)
Trademark Law Soon Amended
Trade marks in Indonesia are regulated by Trade Mark Law No 15 of 2001. But in the near future the Indonesian government will introduce several amendments as follows :
1) The Indonesian Trade Mark Office will expand the definition of a trade mark to include : three-dimensional marks, sound marks, holograms or combinations. At present, Indonesian Trade Mark Law can’t regulate these types of trade marks. This amendment will be done to harmonise with Singapore Treaty on The Law of Trademarks.
2) The Indonesian Trade Mark Office will make the time of trade mark registration shorter so it will take only 11 months from filing until grant.
3) The Indonesian Trade Mark Office will make a change to make the publication process the first step before doing the substantive examination. Previously, the Office conducted the substantive examination before the publication period.
According to this change, the Indonesian Trade Mark Office will publish the application for three months and then it will conduct substantive examination for up to six months. If there is no trade mark that has a similarity in principle or in entirety with other marks, the Office will grant the trade mark certificate to the applicant within 30 days.
4) A trade mark renewal may be filed six months before the expiry date, but there will be a grace period for trade marks of six months after the expiry date.
5) The Indonesian government will adapt ASEAN Economic Community (AEC) harmonisation and Japan Indonesia Economic Partnership Agreement (JIEPA). The Indonesian government will revise its Trade Mark Law to accommodate the international registration of trade marks based on the Madrid Protocol, that will be effective by December 2015.
The crucial amendment to trade mark law in Indonesia is about the Madrid Protocol. The Indonesian government hopes that this can improve the number of trade mark applications from Indonesia to the entire world. It is simpler and cheaper, particularly for small and medium enterprises in Indonesia, to file their trade mark to the other Madrid Protocol members.
Moreover, the Madrid Protocol is expected to increase foreign investment in Indonesia, as it will increase trade and investment opportunities especially between ASEAN countries.
Source: Am Badar & Partners, Indonesia
Jun 24, 2014 (Newsletter Issue 10/14)
Registration Certificates of Designs Now Available
The Kuwaiti Patent Office has announced that it is now possible for applicants of design applications in the country to ask for the registration certificate of their designs.
The Kuwaiti Patent Office has started publishing design applications in the country’s Official Gazette for over a year now. Applications are examined as to form, local novelty, and industrial applicability. Examination is generally a systematic process whereby the Patent Office is expected to notify the applicant of any objections. The applicant is then required to respond with arguments and/or amendments to overcome the objections. Amendments and arguments may then be accepted or rejected, triggering further response, until a design is issued or the application is rejected and/or abandoned. Even though design applications accepted by the Patent Office are published in the Official Gazette, oppositions can only be filed before the Court. After publication, the certificate of registration will be issued upon request.
Source: Saba & Co. IP – Head Office, Lebanon
Jun 24, 2014 (Newsletter Issue 10/14)
Extension to Deadline
The Ethiopian Registry has verbally confirmed that they extend the deadline for the re-registration of trademarks filed prior to 7 July 2006 for a further six month period.
Before the deadline of re-registration trademarks registered prior to 7 July 2006 was on 22 June 2014.
The deadline has been extended for further six month and will now expire in December 2014.
Source: Spoor & Fisher, South Africa/Jersey
Jun 24, 2014 (Newsletter Issue 10/14)
Accession to Hague Apostille Convention
The Republic of Burundi acceded to the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention").
The Convention will enter into force for Burundi on 13 February 2015.
Source: www.hcch.net
Jun 24, 2014 (Newsletter Issue 10/14)
Accession to WTO
Yemen deposited its “Instrument of Acceptance” on 27 May 2014 with Director-General Roberto Azevêdo, confirming its membership terms. According to WTO rules, Yemen will become a full-fledged member on 26 June 2014.
In the “Instrument of Acceptance”, the Yemeni government declares that the law approving Yemen’s Protocol of Accession enacted by Parliament was issued by the President of Yemen on 11 May 2014.
Yemen is the seventh least-developed country (LDC) to accede to the multilateral trading system since the WTO was established in 1995. As an LDC, Yemen will benefit from technical assistance and capacity building from the WTO Secretariat to support the implementation of its accessions commitments, negotiate trade rules and develop the trade-related skills and infrastructure needed to benefit from its WTO membership.
Source: www.wto.org
Jun 10, 2014 (Newsletter Issue 9/14)Trademark Law Soon AmendedKosovo has recently drafted amendments to its trademark and patent laws, which the Kosovo Parliament is expected to adopt this year.
The amendments aim to bring Kosovo’s IP legislation in line with European Union’s directives, as one of the requirements for EU integration, as well as create a better and safer environment for investments and the protection of IP rights.
The draft amendments are available in Albanian, Serbian and English at the Kosovo Ministry of Trade and Industry’s website.
Source: www.petosevic.com Jun 10, 2014 (Newsletter Issue 9/14)Trademark Examination Procedures ChangedThe Trademark Office in the United Arab Emirates recently issued circular n. 3/2014 related to tademark eamination prcedures.
The Trademark Office will cease issuing preliminary examination reports and the examination decisions will only be limited to acceptance, rejection or conditional acceptance. In the past, the UAE Trademarks Office used to issue preliminary examination reports requesting the applicant or his agent to comply with the certain conditions so as to make the application in a proper order and make it ready for final examination which will be stopped as of 1 June 2014.
No grace period will be granted for responding to examination report, whereas it was the practice to give the applicant 10 days to respond to such examination reports.
Trademark applications will be rejected, if their list of goods and services do not comply with Nice classification.
The said amendments entered into force on June 1, 2014.
Source: JAH & Co. IP, Qatar Jun 10, 2014 (Newsletter Issue 9/14)
Deadline for Submitting PoA Changed
The Saudi Trademark Section of the Ministry of Commerce and Industry announced that the new deadline for submitting a PoA will be 90 days from the date notification is received from the office. Previously, the PoA had to be submitted within 30 days of the filing date. This change comes as a result of the introduction of an electronic filing system.
Source: INTA Bulletin, Vol 69, No. 10 of June 1, 2014; Saba & Co. IP, Head Office, Lebanon and Salem Law Firm, Jordan
Jun 10, 2014 (Newsletter Issue 9/14)New Service of E-FilingThe State Agency on Intellectual Property (AGEPI) officially launched the web service “Online Filing of Applications for Registration of Intellectual Property Objects”, which can be accessed at the addresses www.e-agepi.md and www.servicii.gov.md.
The purpose of the launched platform is to provide quality services to citizens and business environment from Moldova and abroad, in the registration of trademarks, inventions, industrial designs, works, phonograms, and other intellectual property objects.
The system enables remote communication without the applicant being forced to move to the AGEPI. At the same time, the user will have a high level of security and confidentiality of information. In addition, on-line filing service enables the efficient administration of time and reduction of personal expenses. In the same vein, service users benefit from a modern system of payment, including by bank card, from advance, in cash or MPay service. Important is that the applicant is not withhold any additional fee in connection with the use of on-line filing system.
Source: www.agepi.gov.md Jun 10, 2014 (Newsletter Issue 9/14)
Agreement between Sint Maarten and BOIP
An agreement was concluded between Sint Maarten and the Benelux Office for Intellectual Property (BOIP) regarding the execution of Sint Maarten's trademark law.
Starting on 1 January 2015, entrepreneurs who are active on Sint Maarten can protect their trademarks by means of a modern electronic procedure. The BOIP will set up and manage this procedure for Sint Maarten. The BOIP will also see to it that Sint Maarten makes a fully online trademarks register available to the public. This register will provide real-time information regarding the current trademark rights on Sint Maarten and facilitate the procedure for acquiring rights quickly and efficiently.
The agreement entails that the BOIP will take care of the back-office activities of the Bureau for Intellectual Property of Sint Maarten (BIP SXM). For its part, the BIP SXM will be responsible for the execution of the legal tasks from the Sint Maarten Trademarks Ordinance and disseminating information to the public.
Source: www.boip.int
Jun 10, 2014 (Newsletter Issue 9/14)E-Filing Now Available The Irish Patents Office announced the launch of their new Trade Mark e-filing facility since 8 April 2014.
This is the latest addition to the suite of interactive online services which already facilitates online searching of national patent and trade mark databases and registers, links which facilitate quick searching of European patent and trade mark registers and databases of the EPO, OHIM and WIPO and includes online searching of the Office’s Official Journal and online payment of a range of statutory fees.
The introduction of electronic filing of trade mark applications will make for greater efficiency on the part of applicants for trade mark registration and will facilitate a speedier and more effective paperless processing of applications by the Office.
The Office’s new e-filing system introduces an easy to navigate application form and makes provision for the uploading of figurative marks in Jpeg format. The e-filing functionality also facilitates the electronic payment of the trade mark application fee by credit or debit card.
Automatic error checking helps ensure that users input the correct data, a fee counter provides information on the cost of the application and the submission process is straightforward and results in an online confirmation receipt that includes a provisionsal application number which can be printed or saved. In addition the TMclass classification tool has been integrated into the ‘Goods and Services’ section of the online application form. This feature allows trade mark applicants to choose pre-approved terms of goods and services which are acceptable to the Office and will further streamline the examination process.
The e-filing system can be accessed here.
Source: www.patentsoffice.ie Jun 10, 2014 (Newsletter Issue 9/14)Accession to Harare Protocol/ARIPOThe Democratic Republic of Sào Tomé and Príncipe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of the African Intellectual Property Organization (ARIPO) on 19 May 2014. Therefore, the Democratic Republic of Sao Tome and Príncipe became a member of ARIPO with effect from 19 May 2014 and the Harare Protocol will enter into force with respect to the Democratic Republic of Sào Tomé and Príncipe on 19 August 2014 bringing the number of Member States of ARIPO to 19 and the number of states party to the Harare Protocol to 18.
Since the Democratic Republic of Sào Tomé and Príncipe is also a member of the Patent Cooperation Treaty (PCT), this means that any international application filed on or after 19 August 2014 will include the designation of the Democratic Republic of Sào Tomé and Príncipe for an ARIPO patent, as well as for a national patent.
Further, as from 19 August 2014 it will be possible for nationals and residents of the Democratic Republic of Sào Tomé and Príncipe to file international applications with ARIPO as a receiving Office.
Source: www.aripo.org; Brian Bacon Inc., South Africa and Honey & Blanckenberg, Zimbabwe May 16, 2014 (Newsletter Issue 8/14)
Trademark Law Amended
On December 18, 2013, the Kyrgyz Parliament adopted the Law of the Kyrgyz Republic “On Amendments to the Law on Trademarks, Service Marks and Appellations of Origin”, which came into force on February 11, 2014.
The amendments aim to harmonize the law with the Constitution of the Kyrgyz Republic and other laws and regulations, as well as to align it with the current practice in the field.
The amended law introduces the right to pledge exclusive rights to a trademark and the rights deriving from a trademark. The law states that the collective trademarks may not be the subjects of pledge, which leads to the conclusion that the right holder can now pledge all other types of trademarks.
The law also introduces the definition of a well-known trademark as well as the provisions related to granting protection to well-known trademarks. Among other things, the law states that the trademark can be recognized as well known by the Board of Appeals at the request of the right holder. Such trademark is then entered into the Kyrgyz register of well-known trademarks and the certificate confirming the status of the trademark is to be issued not later than one month from the registration date. The legal protection of well-known trademarks is termless.
Under the amendments, the right holder can request an accelerated examination of a trademark application before the Kyrgyz PTO. Such request is to be filed within six months from the filling date.
Finally, the time period allowed to publish information regarding the registration of trademarks and appellations of origin in the Official Bulletin has been reduced from three months to one month. The period for the issuance of an appellation of origin registration certificate has also been reduced from three months to one month.
Source: www.petosevic.com
May 16, 2014 (Newsletter Issue 8/14)Reduction of Application and Renewal Fees ProposedThe USPTO has issued a notice of proposed rulemaking relating to the reduction of certain application and renewal fees (79 FR 26664 (9 May 2014)). The notice proposes a new application filing option, to be known as TEAS Reduced Fee (“TEAS RF”= Trademark Electronic Application System Reduced Fee), which will reduce the fee for applications filed using the regular TEAS application form if the applicant authorizes e-mail communications and agrees to file all responses and other documents electronically during the prosecution of the application. In addition, the notice proposes to reduce the fee for TEAS Plus applications and the fee for a TEAS application for renewal of a registration.
The full notice is available under “Proposed Rules” here. Comments must be received by 23 June 2014 to ensure consideration.
Source: www.uspto.gov May 16, 2014 (Newsletter Issue 8/14)
Deadline for Re-Registrations/Other Requirements
As previously reported, following publication of the Regulations on 24 December 2012, it is necessary to re-register all trademarks filed prior to 7 July 2006. In addition, trademarks registered between 7 July 2006 and 24 December 2012 must be regularized under the new law by obtaining a certificate reflecting the 7-year term of protection prescribed by the new law.
There is conflicting information circulating in the industry regarding the applicable deadlines, and the discrepancies seem to arise from a misunderstanding of the correlation between the Gregorian calendar of 12 months and the Ethiopian calendar of 13 months.
Re-registration of trademarks registered prior to 7 July 2006:
There is an 18-month sunrise period for the re-registration of trademarks registered prior to 7 July 2006 following the publication of the Regulations. The publication date was 24 December 2012, which would result in a deadline for re-registration of 24 June 2014. However, in accordance with the local Ethiopian calendar the deadline will end on 22 June 2014. As this is a Sunday, the deadline will be extended to 23 June 2014.
Obtaining an amended new law certificate for trademarks registered 7 July 2006 and 24 December 2012:
Cases registered between 7 July 2006 and 24 December 2012, and due for renewal (based on a 7-year term) prior to 23 June 2014 do not need to be formally amended. The renewal certificate once issued will reflect the new law 7-year term.
For trademarks registered between 7 July 2006 and 24 December 2012, with a renewal date after 23 June 2014, a new law certificate should be obtained, amending the previously issued 6-year term of protection to the new 7-year term. It is recommend that in these cases, applications for the new law certificates are filed by 23 June 2014 despite the possibility that the EIPO may extend that deadline.
Source: Spoor & Fisher Jersey, www.spoor.com
May 16, 2014 (Newsletter Issue 8/14)Change of PracticeThe Venezuelan Patent and Trademark Office (VPTO) has published in the Bulletin No. 546 dated 9 April 2014 three Official Notices of relevant content:
1) Oppositions to TM Applications
The VPTO established that oppositions against the registration of a trademark application may be filed on the basis of (i) the grounds for non-registrability provided in articles 33, 34 and 35 of the current local IP legislation, (ii) on the grounds for absolute non-registrability referred to public policy, or (iii) on the grounds that third parties rights are affected based on prior applications and registrations.
2) Spanish sworn translation of documents
Trademark applicants are reminded that all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be accepted.
3) Change of owner regarding pending applications
As of 9 April 2014, it is again possible (as it was under the former Andean Legislation) to file a change of owner (applicant) for a pending Patent and Trademark application. In case of an assignment, it will be specifically required that the assignor assigns the priority filing rights of the pending applications involved in the transfer.
Source: Citemark International IP, Venezuela Apr 16, 2014 (Newsletter Issue 7/14)
Joins the Hague System
The Republic of Korea has deposited its instrument of accession to the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs.
With its accession, which takes effect from 1 July 2014, the Republic of Korea joins the WIPO-administered Hague system for the International Registration of Industrial Designs. This will bring the membership of the system to 62.
The Hague system makes it possible for an applicant to register industrial designs in multiple countries by filing a single application with the International Bureau of WIPO. By allowing the filing of up to 100 different designs per application, the system offers significant opportunities for efficiency gains.
It also simplifies the process of multinational registration by reducing the requirement to file separate applications with the IP offices of each Hague member country/region in which protection is sought. The system also streamlines the subsequent management of the industrial design registration, since it is possible to record changes or to renew the registration through a single procedural step.
Source: www.wipo.int
Apr 16, 2014 (Newsletter Issue 7/14)New E-Filing System LaunchedThe Canadian Intellectual Property Office (CIPO) has launched a new e-filing system on 31 March 2014. Applicants can submit new and revised online applications for ordinary trademarks, certifications marks and distinguishing guises via the new system.
The old system has been decommissioned. A user guide is available upon request. For further information, please click here
Source: www.cipo.ic.gc.ca Apr 16, 2014 (Newsletter Issue 7/14)Official Trademark Fees ChangedThe Brazilian PTO has changed its official fees through the Resolutions Nos. 126 of 6 March 2014 and 129 of 10 March 2014. The main changes concern the increase for paper filings and reductions for online services rendered to entities that have different treatment according to the Brazilian Law under certain conditions.
The official fee for a trademark application is now BRL 530.00 for paper filing. A discounted fee of BRL 212.00 is under certain conditions possible.
The official fee for online trademark applications remains the same with BRL 355.00. A discounted fee of BRL 142.00 is under certain conditions is possible.
Source: Lia e Barbosa Sociedade de Advogados, Brazil and Assef e Moschetta Advogados, Brazil Apr 16, 2014 (Newsletter Issue 7/14)
Official Fees Increased
The Egyptian government has recently revised its official fees schedule in connection with the registration of trademarks and designs. By virtue of Ministerial Decision no. 95 of 2014, issued on 19 March 2014, the official fees for a few trademark and design related matters have increased substantially in comparison with their current level.
More specifically, the increase is with regards to the following:
(1) oppositions
(2) availability search and status search
(3) obtaining certified copies.
The new rates are applicable as of 1 April 2014.
Source: SABA & Co.
Apr 16, 2014 (Newsletter Issue 7/14)Change of Practice of Highly Renowned TrademarksAccording to Resolution 107/2013, which came into effect 11 March, 2014, it is now possible to request the recognition of a highly renowned trademark before the Brazilian PTO through an autonomous proceeding. Previously, the highly renowned trademark recognition was only possible incidentally, for instance in an opposition or trademark cancellation.
The request of a highly renowned trademark in Brazil must follow rules of the Law and has several details. One of them is an extensive market research/survey that proves that the mark is renowned. As a rule, the validity of the registration is of 10 years. After this period a new request of recognition must be filed. The recognition is dependent of a trademark registration and its validity/expiration.
The official fees for the request of highly renowned trademark recognition are BRL 37,575.00 online and BRL 41,330.00 in paper.
Source: Lia e Barbosa Sociedade de Advogados, Brazil and M. J. Zanon, IP Lawyer, Brazil Apr 16, 2014 (Newsletter Issue 7/14)
New Regulations to Trademark Assignment
The Jordanian Ministry of Industry and Trade issued the new regulations related to trademark assignment No. 55 of 2014.
The new regulations which contain a list of articles concerning the trademark assignment, license and pledge entered into force after its official publication in the official gazette on April 1, 2014.
According to the new regulations, the Power of Attorney to be submitted for the assignment, license or pledge of trademark should be newly drafted (no more than one year old); unless the assignor and assignee agree on a shorter period.
The regulations stipulate that the deed of assignment should be submitted along with the last updated certificate of registration, and the Arabic translation of all non-Arabic documents certified by the notary public.
Source: www.agip.com
Apr 16, 2014 (Newsletter Issue 7/14)
Civil Code Amendments to Impact IP Regulations
The Russian Government has adopted a set of Civil Code amendments which will significantly affect the Intellectual Property sphere. These amendments will enter into force on 1 October 2014.
Below is a summary of the main trademark-related amendments:
A request for the state registration of an assignment, license or pledge substitutes the registration of an assignment/license/pledge agreement. In this sense, the Russian legislation will be brought in line with the Singapore Treaty on the Law of Trademarks. It will be possible to file a request and supplement it with either a notification signed by both parties or a copy/extract of the agreement (Art. 1232).
If the exclusive license is granted, the licensor has no right to use an IP right in the same way as granted to a licensee unless otherwise agreed on in the license agreement (Art. 1236).
Under current regulations, the IP owner does not need to prove the fault of the infringer in civil proceedings. In administrative proceedings, it depends on the case and the court, while in criminal proceedings there is a need to prove fault in all circumstances. Under the amendments, the IP owner will have to prove the fault of an infringer, particularly physical persons. Legal entities and individual entrepreneurs will be liable for IP infringement, even if their fault is not proven, unless the infringement arises as a result of vis major (Art. 1250).
The scope of protection for industrial designs will be based on their images, and not on the list of their essential features (Art. 1358).
The Russian PTO will conduct substantive examination of utility model applications, instead of using the current utility model registration system (Art. 1390).
Registration of a trademark in respect of similar goods and services is prohibited if it contains company name, trade name or commercial designation of another person (Art. 1483). Currently, a third party is entitled to base its cancellation action on the company name right, whereas the examiners at the Russian PTO cannot use that provision during the trademark examination. As soon as the new version of the Civil Code comes into effect, the examiners at the Russian PTO will be able to issue office actions or decisions on the basis of prior company names, trade names or commercial designations.
Observations are officially mentioned in the new version of the Russian Civil Code. According to Art. 1493, any person can file an observation in relation to any published trademark application before the issuance of the final decision.
The term for filing an appeal against a decision in a trademark application grant procedure will be 4 months from the date of its issuance, instead of 3 months from the date of its receipt, as the law currently prescribes (Art. 1500).
Source: www.petosevic.com
Apr 01, 2014 (Newsletter Issue 6/14)Change of Practice of PoAThe Iraqi Trademarks Registrar has recently changed its practice with regards to power of attorney and stipulates the following:
Original power of attorney should be submitted at the time of filing the trademark application. The phrases “And the POA is valid for three years unless you are notified with its cancellation by us” should be included in the power of attorney form.
The above new practice is effected as of 1 March 2014. However, local agents and lawyers are still arguing this matter with the Iraqi Trademarks Registrar and this stipulation might be waived at any time.
Source: JAH & Co. IP, Qatar Apr 01, 2014 (Newsletter Issue 6/14)
New International TM Application Form
IP Australia announced on its website that they have published a new Australian International Trade Mark Application Form. This form is for applicants who are electing to file a Trade Mark through the Madrid Protocol with IP Australia being the office of origin.
The form is an adaption of the Official WIPO Madrid Agreement MM2 Form, taking into account the specific requirements for Australian users.
Source: www.ipaustralia.gov.au
Apr 01, 2014 (Newsletter Issue 6/14)Accession to Madrid ProtocolThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to refer to the deposit by the Government of the Republic of Kenya on March 26, 1998, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"). Please see the Madrid (Marks) Notification No. 102, for ease of reference.
In this respect, the Director General of WIPO has the honor to notify that the Republic of Kenya deposited, on March 12, 2014, the following declaration:
- that in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Republic of Kenya, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive an individual fee, instead of a share in the revenue produced by the supplementary and complementary fees.
The said declaration will enter into force on June 12, 2014.
Source: www.wipo.int Apr 01, 2014 (Newsletter Issue 6/14)
Trademark Law Soon Amended
Montenegro has recently drafted amendments to its trademark law in order to harmonize it with the European Union trademark legislation. It is expected that the amendments will be soon adopted.
The amended law more precisely regulates the trademark registration process and trademark infringement court proceedings.
The provisions concerning well-known trademarks and trademarks with reputation have been aligned with the corresponding provisions of the Directive 2008/95/EZ.
The amended law clearly outlines the conditions, the authorized persons and the procedure related to the invalidation of trademarks and collective trademarks.
The provisions regulating the procedure for cancellation of a trademark due to non-use have been amended as well. The new law also permits cancelling trademarks that have become generic as well as trademarks that are likely to cause confusion with existing marks, in line with Directive 2008/95/EZ.
The amended law further strengthens civil protection in case of trademark infringement. To that end, the law includes additional provisions on the seizure and destruction of goods, compensation of damages, usual compensation, unjust enrichment, preliminary injunctions, securing evidence and the publication of court decision.
Finally, the amended law stipulates monetary fines in case of trademark infringement. The fine in the amount of EUR 1,500 – 20,000 (USD 2,100-28,000) may be imposed against a legal entity in case of the unauthorized use of a trademark. The amendments stipulate fines in the amount of EUR 500-2,000 (USD 700-2,800) for physical persons and the responsible person within a legal entity, and the fines in the amount of EUR 1,300-6,000 (USD 1,800-8,300) for entrepreneurs.
Source: PETOSEVIC Montenegro
Apr 01, 2014 (Newsletter Issue 6/14)Change of Practice of PoAAs of 1st April 2014, the UAE Trademark Office will not accept any new filings without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs. Same regulations will apply for the opposition procedures, knowing that all opposition must be filed within 30 days from the publication date. This will apply as well to any applications with a priority claim with an imminent deadline or opposition cases with deadlines.
However, all other actions such as recordal of change of name or address, assignment and renewal can be filed and official fees thereof paid without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs whilst these actions will not be processed until the submission of the power of attorney executed as required.
Source: JAH & Co. IP, Qatar Mar 18, 2014 (Newsletter Issue 5/14)
Trademark Law Changed
On February 6, 2014 the President of the Kyrgyz Republic signed the Law of the Kyrgyz Republic "On Amendments and Additions to the Law on Trademarks, Service Marks and Appellations of Origin." The law was adopted by the Parliament on December 18, 2013.
The Law was developed by the Kyrgyz Patent Office to improve the legislation of the Kyrgyz Republic in the field of intellectual property. Introducing some amendments into the existing Law was encouraged by the current legal practice.
The Law provides the applicant with the right within 6 months from the filing date to apply for an early examination of the mark. Said examination shall be held not earlier than 6 months from the filing date.
In addition, the Law gives trademark owners the right to pledge exclusive rights to a trademark, and defines the concept of a well-known trademark.
Also, the Law shortens the term of publication in the official bulletin of information relating to the registration of the trademark and appellations of origin inserted into the Register up to 1 month. Earlier the publication term was 3 months. The period for issuing the certificate on the appellation of origin has also been reduced by the Law to 1 month.
The Law further contains amendments of the clarifying nature that will contribute to the correct interpretation and effective implementation of the Law "On Trademarks, Service Marks and Appellations of Origin".
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Mar 18, 2014 (Newsletter Issue 5/14)
GCC Trademarks Law Approved
The decision No. 6 of 2014 approving the unified Gulf Cooperation Council (GCC) Trademark Law which was ratified in Bahrain in 2012 has been issued by the Majesty King Hamad bin Isa Al-Khalifa.
The GCC Trademark Law is expected to enter into force in Bahrain six months after its Implementing Regulations are issued.
In this regard, Kingdom of Bahrain is still adopting the current Trademark Law No. 11 of 2006 until the GCC Trademark Law is effective.
The Law, which comprises 52 articles, outlines the general directives and rulings governing trademark registration, renewal, assignment and cancellation procedures in the GCC countries.
Source: www.agip.com
Mar 18, 2014 (Newsletter Issue 5/14)
New Procedure for Amending TM Applications
Starting February 2014, the Trademark Office in the UAE will no longer accept any major changes on all trademark applications before the mark is completely registered. Only typographical errors may be corrected provided that they are not closely related to the subject trademark or do not cause the addition or modification of the main elements of the application. Amendment of the trademarks may occur after the mark is registered according to the Trademark Law enforced in the country.
Source: Saba & Co. IP – Head Office, Lebanon
Mar 18, 2014 (Newsletter Issue 5/14)New Scale for Filing and Registration NumbersThe Saudi Trademark Office has started to adopt one number for the trademark which will be used as filing and registration number at the same time. This number is the electronic reference of the mark which starts with the Lunar year, for instance: 143500541. The system will restart the counting at the beginning of every Lunar year.
Source: JAH & Co. IP, Qatar Mar 18, 2014 (Newsletter Issue 5/14)
IPO Joins Similarity
The UK Intellectual Property Office (IPO) has joined the Similarity tool.
Similarity is a common database of comparisons of goods and services that allows users to assess whether given goods or services are considered similar or dissimilar – and to what degree – according to the practice of the participating IP offices. Similarity benefits users by bringing more transparency to the decision-taking process of EU national offices and OHIM. Similarity also improves the predictability of opposition decisions.
Source: www.tmdn.org
Mar 18, 2014 (Newsletter Issue 5/14)
Accession to Singapore Treaty
WIPO presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Belarus on February 13, 2014, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Belarus, on May 13, 2014.
Source: www.wipo.int
Mar 04, 2014 (Newsletter Issue 4/14)
Official Fees Increased
The Korean Intellectual Property Office (KIPO) announced official fee increases for filing applications and Requests for Examination. The changes came into effect on 1 March 2014.
The official application fee is now KRW 72,000 (instead of KRW 66,000) for one class. The online application fee is now KWR 62,000 (instead of KRW 62,000) per class.
Source: Kim & Chang, South Korea
Mar 04, 2014 (Newsletter Issue 4/14)Notice of Proposed RulemakingThe USPTO has issued a notice of proposed rulemaking relating to changes in requirements for collective trademarks and service marks, collective membership marks, and certification marks.
These proposed rules primarily codify current USPTO practice and provide the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks. A new requirement is proposed for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This proposed rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark. The notice also includes some proposed amendments to rules that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use.
The full notice can be viewed here. Comments must be received by 21 May 2014 to ensure consideration.
Source: www.uspto.gov Mar 04, 2014 (Newsletter Issue 4/14)Fast Track Examination Consultation OpenThe Intellectual Property Office (IPO) has informed its users about a new public consultation on whether there is a need to re-introduce the fast track examination procedure.
The fast track examination service of trade marks came into effect in April 2008 and was suspended in 2009, due to a combination of low take up and the short time to examination using the standard procedure, at that time. In late 2012 the idea of reintroducing the service was raised but, since then, circumstances have changed and the introduction of a new IT processing system in early 2013 has meant that examination periods using the standard procedure are again very short.
For further information, please check here. Comments can be sent to 'fasttrackresponse@ipo.gov.uk' until 15 April 2014.
Source: www.ipo.gov.uk and www.gov.uk Mar 04, 2014 (Newsletter Issue 4/14)Relocation of TM and Patents DepartmentKuwaiti Trademarks and Patents Department announced that it will be relocating to new premises (KIBCO) Complex. Consequently, the Department will no longer receive any transactions as from 1 March 2014 until further notice, including the trademarks filing applications.
Source: JAH & Co. IP, Qatar Mar 04, 2014 (Newsletter Issue 4/14)IP Marketplace now in EnglishThe Danish online service IP Marketplace is now available in English. It is managed by the Danish Patent and Trademark Office since 2007.
IP Marketplace is the place in which buyers and sellers of IP rights are introduced to each other. On IP Marketplace you can find rights that are offered for sale or license of IP rights. You can also search for rights which you would like to buy or license yourself. IP Marketplace is free of charge for both buyers and sellers.
To access the IP Marketplace please click here.
Source: www.ip-marketplace.org Mar 04, 2014 (Newsletter Issue 4/14)Opposition Period ChangedAs per the Trade Marks (Amendment) Act, 2010 which came into force on July 8, 2013, the time for filing notice of opposition from the date of publication of the advertisement in the Trade marks Journal is now four months (as against three months with an extended period of one month) and no further extension of time beyond four months is permissible.
Source: S. S. Rana & Co., India Feb 18, 2014 (Newsletter Issue 3/14)
Accession to Hague Apostille Convention
The Kingdom of Bahrain announced that legalization of Power of Attorney and other supporting documents required for all Intellectual Property (IP) related matters would no longer be required. The Bahraini consulates abroad will no longer provide legalization services for documents if the applicant’s country is a member of the Hague Convention (5 October 1961).
This decision came as a result of Bahrain’s accession to the Hague Convention abolishing the requirements of legalization of foreign public documents, and it entered into force as from 31 December 2013.
Accordingly, the apostille documents are sufficient for filing with the Industrial Property Office and the Patent Office in Bahrain.
Source: www.agip.com
Feb 18, 2014 (Newsletter Issue 3/14)Trade Marks (Amendment) Rules 2013The Intellectual Property Office of Singapore (IPOS) has published the Trade Mark (Amendment) Rules 2013 (Circular No. 9/2013, dated 22 November 2013) which came into effect on 1 January 2014.
A summary of the amendments is as follows:
(a) Amendment to the First Schedule of the TM Rules
Item 35 of the First Schedule is amended to clarify that the fee payable for the issuance of a certificate under section 103 of the Trade Marks Act (Cap. 322) is computed on a 'per certificate' basis.
This amendment does not impact the cost of requesting a certificate, as each certificate issued under section 103 may only be in respect of one trade mark.
(b) Amendment to the Third Schedule of the TM Rules
In view of the coming into force of the Tenth Edition, Version 2014 of the Nice Classification (hereinafter abbreviated as "NCL (10-2014)") on 1 January 2014, the Third Schedule is amended to reflect the changes to the Class headings and items introduced by NCL (10-2014).
To access the Amendment please click here
Source: www.ipos.gov.sg and Namazie & Co., Singapore Feb 18, 2014 (Newsletter Issue 3/14)
Intellectual Property Automated System Launched
The Nigerian Federal Government launched an Intellectual Property Automated System (IPAS) on 24 January 2014 in order to improve the integrity and standards of Intellectual Property applications. The IPAS is a world acclaimed system of automated processing of applications for the registration of trademarks, patents and industrial designs.
Source: www.fmi.gov.ng and www.nlipw.com
Feb 18, 2014 (Newsletter Issue 3/14)
E-Filing Possible
USAID’s Economic Prosperity Initiative (EPI) and National Intellectual Property Center (Sakpatenti) presented a new intellectual property rights (IPR) electronic registration system.
The new system represents a Web-based electronic registration and management system for intellectual property objects allowing rightholders and applicants unhindered and cost-effective IPR registration and maintenance.
The state-of-the-art system substitutes current paper-based procedures at Sakpatenti, allowing online registration and processing of intellectual property objects, paperless communication with applicants and patent attorneys. It includes electronic payments, remote/automated publication of registered objects, alerts and filters, and other functions of integrated communication systems. Owing to the new system, intellectual property objects registration procedures will become more efficient, transparent and faster.
Source: www.sakpatenti.org.ge
Feb 18, 2014 (Newsletter Issue 3/14)E-Filing System EnhancedThe Office of Controller General of Patents, Designs and Trademarks (CGPDTM) has announced that the Trade Mark Registry has further developed the system.
The online filing services will in addition to online filing of new trademark applications, now also include subsequent filings. The new service will include e-filing facility relating to renewals, oppositions, corrections, duplicate registration certificates, legal certificates and NOC for copyright.
Further, the Trade Mark Registry has launched the facility of online tracking of requests for issuance of legal certificates and availability of trade mark indexes of registered marks, pending marks and index of the name of the proprietors of registered trade marks.
For access the notice, please click here
Source: www.ipindia.nic.in Feb 04, 2014 (Newsletter Issue 2/14)E-Publication Fees IncreasedOn 14 January 2014, the Saudi Trademark Office (STO) has announced that the official e-publication fees for all new trademark applications has been increased with immediate effect.
The e-publication fees of new trademarks are SAR 1,500 (EUR 290) for local companies and SAR 3,000 (EUR 590) for foreign companies.
Source: JAH & Co. IP, Qatar Feb 04, 2014 (Newsletter Issue 2/14)
German Designs Act Revised
The German Patent and Trade Mark Office (DPMA) has revised the German Designs Act with effect from 1 January 2014.
The major changes are:
- The German term "Geschmacksmuster" has been replaced by the term "registered design".
- A design invalidity proceeding before the German Patent and Trademark Office (GPTO) has been introduced. Before, a request had to be filed in a law suit at a Civil Court. Now an application for invalidity of a registered German design can be filed directly with the GPTO.
- Further, different designs can now be included in one multiple application, even if they do not belong to the same class of goods.
- The new publication medium is the German Federal Gazette.
Source: www.dpma.de
Feb 04, 2014 (Newsletter Issue 2/14)New Practice to Trademark ProceedingsThe United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN 1/2014) relating to the relevance of colour to a mark registered in black and white but used extensively in a particular colour or colours.
For more information on the new Tribunal Practice Notice please click here
Source: www.ipo.gov.uk
Feb 04, 2014 (Newsletter Issue 2/14)Proposed Rule to Trademark PracticeThe USPTO has issued on 23 January 2014 a notice of proposed rulemaking relating to miscellaneous changes to trademark-related rules of practice. The notice proposes a variety of minor rules changes to modernize and clarify the trademark rules, update cross references, and eliminate requirements now deemed unnecessary. Comments must be received by 23 April 2014 to ensure consideration.
To access the full notice please click here
Source: www.uspto.gov Feb 04, 2014 (Newsletter Issue 2/14)Change of Opposition Procedure AwaitedOppositions against French trademark applications can only be filed on the basis of one trademark application or registration (French TM, CTM, International Tm covering France) or on the basis of a well-known trademark.
This old system is to be changed very soon as far as it may be possible in the next few months to base an opposition on:
- The name of a territorial authority (such as the name of a town; Paris or Cannes for instance) on the basis of the rule L.711-4h of the French IP Law. The draft legislation (named “Hamon Law”) is expected to be signed in February 2014 and its implementing decree is awaited for April or May 2014.
- The name of an Appellation of Origin or a protected Geographical Indication (such as Champagne or Roquefort) on the basis of the rule L.711-4d of the French IP Law. An amendment from the Government has just been voted in January 2014 by the National Assembly.
The French TMO is also thinking about dematerializing this administrative procedure and setting up an “e-opposition” system, which should come into force within December 31, 2016.
Source: Inlex IP Expertise, France Feb 04, 2014 (Newsletter Issue 2/14)E-filing for Designs/International Trademarks Now PossibleThe Benelux Intellectual Property Office (BOIP) has announced on its website the implementation of e-filing for designs, developed by OHIM´s Cooperation Fund.
E-filing for designs offers a simple five step online registration process, making the design application process easier and quicker for users. Access to the e-filing procedure is provided by "My BBIE" based on an account which can be requested here
Further, BOIP also introduced a new e-filing tool for international trademark applications in conjunction with the World Intellectual Property Organization (WIPO). Paper filing of international trademark applications will no longer be available. Access to the e-filing procedure is provided by "My BBIE".
Source: www.boip.int and www.oami.europa.eu Feb 04, 2014 (Newsletter Issue 2/14)Deadline for Re-Registrations AdjustedOn 24 December 2012, new Regulations were published in Ethiopia , bringing into force the Trade Mark Registration and Protection Proclamation 2006, dated 7 July 2006.
The Regulations have required owners of trade mark registrations filed under the old law, namely before 7 July 2006, to re-register their existing registrations. This applies to all cases filed prior to 7 July 2006, irrespective of whether they have been renewed since. The Ethiopian Intellectual Property Office (EIPO) has confirmed that the deadline for re-registering cases registered under the old law will be 18 June 2014. The EIPO will not be accepting applications for re-registration after that date.
The new law extends the term of trade mark registrations in Ethiopia from 6 to 7 years, and provision is made in the Regulations for the amendment of the term of registrations filed between 7 July 2006 and 24 December 2012. The EIPO has announced that it is now accepting applications for amendment of such registrations, but the deadline for amending such cases will also expire on 18 June 2014.
Finally, the EIPO has clarified the status of registrations which became due for renewal between 24 December 2012 and 18 June 2014. Such registrations are now being renewed for a period of 7 years, without requiring amendment first.
Source: JAH & Co. IP, Qatar Jan 21, 2014 (Newsletter Issue 1/14)Electronic File Inspection LaunchedThe German Patent and Trade Mark Office (DPMA) announced that it allows electronic file inspection on patent and utility model files effective from 7 January 2014.
The documents available for electronic inspection include office actions, decisions, search reports as well as communications relevant to the procedure and other parts of files in PDF format.
Entering the file number and clicking on the button "File inspection" in the free-of-charge information service DPMAregister will lead you to the requested information. All granted patents, registered utility models as well as all applications filed that have already been published on or after 21 January 2013 will be available.
For further information please click here
Source: www.dpma.de
Jan 21, 2014 (Newsletter Issue 1/14)
Accession to Hague Apostille Convention
On 10 December 2013, Paraguay deposited its instrument of accession to the Hague Convention of 5 October 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention"). The Convention will enter into force for Paraguay on 30 August 2014.
Source: www.hcch.net
Jan 21, 2014 (Newsletter Issue 1/14)
New Procedures for Trademark Renewal
In virtue of the Ministerial Decree No. 2057 dated 9 December 2013, a new practice related to the trademark application renewal has been adopted by the Syrian Trademark Office. The new practice stipulates that to renew a trademark application covering several classes, each class will be included in one separated renewal application, and a separate fee for each single-class renewal application as well as fee of obtaining a separate legalized copy of Power of Attorney per application should be paid. Previously, one multi-class renewal application was filed covering several classes.
This practice is applied on the renewal applications filed as of 19 December 2013.
Source: www.agip.com
Jan 21, 2014 (Newsletter Issue 1/14)Nice Classification UpdateOn 1 January 2014, the Nice Classification, Tenth Edition, version 2014 (NCL 10-2014), became effective. Changes to the class headings are available here and noteworthy changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014 can be seen here.
Source: www.uspto.gov Jan 21, 2014 (Newsletter Issue 1/14)
Industrial Property Act Amended
On 27 November 2013 Slovenia adopted an amendment to the second paragraph of Article 67 of the Industrial Property Act regulating time frames for filing the request for continuation of proceedings after missing a deadline. The amendment came into force on 21 December 2013.
In accordance with the first paragraph of Article 67, the applicant, who has failed to comply with a time limit set out for the fulfillment of the obligations required in the proceedings for the acquisition of a right, may request that the non-observed time limit be deemed to have been complied with, that legal consequences of such non-observance be abolished, and that the Slovenian IPO continues the proceedings for the acquisition of the right. This legal remedy is different from restitutio in integrum as it can only be applied in the IP right application stage of the proceedings and not later on. At the same time, it is not limited only to cases where the applicant/holder has a justified and provable reason for missing a deadline, like in the case of restitutio in integrum. No reason for missing a deadline needs to be proven or even given.
The former version of the second paragraph of Article 67 stipulated that the request for continuation of proceedings had to be filed within two months after the applicant learned of the non-observance of the deadline or its legal consequences, while not setting any other deadline to file the request. In theory, this allowed the applicant to file a request for continuation of proceedings even years after missing the deadline.
In the interest of legal certainty, the amended law now sets the time limits to file the request for continuation of proceedings within two months after the cause for missing the deadline ceased to exist or within two months after the applicant learned that he missed the deadline. However, in no case can this request be filed later than six months after missing the original deadline.
Source: www.petosevic.com
Jan 21, 2014 (Newsletter Issue 1/14)
Name of Trademark Office Changed
The trademark office in Finland has changed its name from National Board of Patents and Registration of Finland (NBPR) to Finnish Patent and Registration Office (PRH).
The new abbreviation PRH comes from the Finnish name (Patentti- ja rekisterihallitus) and will also be used in English.
The Finnish and Swedish names remain the same.
www.prh.fi
Jan 21, 2014 (Newsletter Issue 1/14)IP Laws Amendment Act PublishedThe Intellectual Property Laws Amendment Act, 28 of 2013 (IPLAA) was published in the Government Gazette on 10 December 2013. It is expected that IPLAA will come into effect in the first half of 2014.
IPLAA amends the South African Performers’ Protection Act, Copyright Act, Trade Marks Act and Designs Act. The aim is, inter alia, to provide for the recognition and protection of certain manifestations of indigenous knowledge as a species of intellectual property.
To access the Gazette please click here
Source: Spoor & Fisher, South Africa Dec 17, 2013 (Newsletter Issue 18/13)E-Filing PracticeThe new Saudi electronic system adopts basically the Nice Classification of Goods and Services and accordingly the main items in the respective class heading should merely be included and not all the goods falling in the relevant list of goods of the Nice Classification or the goods or services requested by the applicant.
In this perspective it should be noted that Saudi Arabia does not adopt a subclass system which means that registration of a trademark in a certain class of goods or services provides a legal protection for any items in that class though it is not clearly indicated in same. Also, the Saudi Trademarks Registrar will not allow the registration of a similar or identical trademark for different goods or services in the same class.
According to a recent arrangement introduced by the Saudi Trademark Office, trademark applications will be accepted on formal grounds only if they comply with the above.
Given that trademark applications can only be submitted electronically, all applications with an item that is not in line with the above will not be properly docketed into the system, which will basically result in considerable delays.
Source: JAH & Co. IP, Qatar Dec 17, 2013 (Newsletter Issue 18/13)
SIPO Joined Designview
On October 30, the Slovenian Intellectual Property Office (SIPO) joined Designview, online database and search tool created to provide free access to data on designs registered in all participating national offices.
By adding nearly 4,000 Slovenian designs, Slovenia has joined Portugal, Benelux, Estonia, Spain, Greece, Bulgaria, Slovakia, Latvia and OHIM in the Designview community.
Source: PETOŠEVIĆ
Dec 17, 2013 (Newsletter Issue 18/13)Classification Goods and Services PublishedThe Indian Registrar of Trade Marks has announced the publication of the classification goods and services under Section 8(1) of Trade Marks Act, 1999 for the purpose of Registration of Trademarks on 29 November 2013.
Please check the Public Notice and Classification of Goods and Services for more information.
Source: www.ipindia.nic.in Dec 17, 2013 (Newsletter Issue 18/13)
Electronic Trademark Certificates
The Argentine Trademark Office (INPI) published disposition M-1292-2013 implementing issuance of electronic Trademark Certificates on 6 November 2013.
The digital Certificate will be issued when logos or images of the marks have been introduced in the official system. Otherwise, the Certificate will still be issued on paper.
The system will inform the applicant or TM Agent of an alphanumeric code which is required to view and download the Certificate. The Certificates will remain available for inspection for the duration of the registration. The authorities understand that this system will reduce the backlog in the issuance of Trademark Certificates, which currently is between six and seven months.
Source: G. Breuer Avocados, Argentina
Dec 17, 2013 (Newsletter Issue 18/13)
Trade Register Act Soon Amended
The Finnish Trademark Office announced on its website that the Trade Register Act will be amended at the beginning of 2014. The amendment requires that the last four digits of the personal identity code and home addresses must not be publicly displayed. The legislation reform substantially affects the Trade Register’s information services and the notifications sent to the register.
From the start of 2014, the Trade Register basically continues to be a public register providing a wide range of information on businesses and their operations. However, the amendment to the Act will mean that the information contained in the register will decrease and the information provided on personal data will be reduced. Disclosing the last four digits of the personal identity code from the Trade Register will no longer be allowed; in addition the information on home addresses of natural persons living abroad will be strictly regulated.
Source: www.prh.fi
Dec 17, 2013 (Newsletter Issue 18/13)
Use of Trademarks No Longer Optional
On October 24, 2013, the Uruguayan Congress passed Law No 19,149, known as Ley de Rendición de Cuentas (Accountability Law), which, among other provisions not related to trademarks, establishes that trademarks are now subject to non-use cancellation actions. This provision will be effective January 1, 2014.
Until now, use of trademarks was optional pursuant to Article 19 of the Trademark Law, and, therefore, trademarks were not subject to cancellation based on non-use. Under Article 187 of the Accountability Law, which substitutes Article 19, a trademark registration may be cancelled when the mark has not been used by the trademark owner, a licensee or an authorized person within five consecutive years following its registration date or following the renewal date, or when use has been interrupted for more than five consecutive years, except in cases of force majeure or when the trademark was used to identify products or services covered by other classes, even though they are not related.
To request the cancellation of a trademark based on non-use, the claimant must prove a direct, personal and legitimate interest. The burden of proof of use is on the trademark owner, who may rely on any type of evidence to prove that the trademark has been publicly and actually used. The action will be decided by the Dirección Nacional de la Propiedad Industrial (the National Directorate of Industrial Property).
In addition, the new law provides that it will not be necessary to submit evidence of use when applying for the renewal of a trademark.
The changes introduced by the Accountability Law will have an impact on the commercial strategy of trademark owners, who must use their trademarks to avoid having them cancelled based on non-use.
Source: INTA Bulletin, Vol. 68 No. 23, December 15, 2013 from Cikato Abogados, Montevideo, Uruguay
Dec 17, 2013 (Newsletter Issue 18/13)
Submissions to TM ID Suggest Mailbox
On January 1, 2014, the USPTO will publish new and updated goods and services identifications and classifications in the USPTO ID Manual to reflect the Nice Classification, Tenth Edition, version in force effective January 1, 2014. In order to implement these changes, no additional entries to the ID Manual will be uploaded after December 12, 2013. Suggestions to the TM ID Suggest mailbox that are submitted and approved between Tuesday, December 10, 2013 and Monday, January 6, 2014 will be added to the Manual and become effective on Thursday, January 9, 2014.
Source: www.uspto.gov
Dec 17, 2013 (Newsletter Issue 18/13)
Design Law Soon Amended
Two amendments to the German law on designs will come into force on April 1, 2014. First of all, the name of the law will change from Geschmacksmustergesetz' into 'Designgesetz'. The official name 'Geschmacksmuster' will also change to 'Design' in order to comply with international conventions. The second amendment relates to the introduction of nullity proceedings before the Office. These proceedings will be less costly than court proceedings which have applied to date. However, it will still be possible to undertake court proceedings.
Source: Witte, Weller & Partner Patentanwälte, Germany
Dec 03, 2013 (Newsletter Issue 17/13)
Adoption of Euro
On January 1, 2014 Latvia is going to adopt Euro, replacing the currency Lats. Laws and regulations governing payments in the field of industrial property have been amended accordingly:
- Regulation of the Cabinet of Ministers No. 824 "On the fee for the legal protection", amended on September 24, 2013;
- Regulation of the Cabinet of Ministers No.472 "On the fee for the legal protection of designs", amended on September 24, 2013;
Regulation of the Cabinet of Ministers No.966 "On the fee for the legal protection of trademarks", amended on September 24, 2013;
Currently both Lats and Euro are indicated in parallel on the website of the Patent Office.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Dec 03, 2013 (Newsletter Issue 17/13)
TM Applications with Priority Claim
On April 5, 2013, the Intellectual Property Office of the Philippines (IPOPHIL) announced that a certified true copy of a priority application is no longer required to prove entitlement to an applicant’s priority claim. Further clarification was issued on October 18, 2013.
The new guidelines are as follows:
1. For applications claiming Paris Convention priority, a certified true copy of the priority application is no
longer required if details of the priority application in the English language are available from the online trademarks database of the foreign IP Office. If the priority application is not in the English language or its details are not available online, a photocopy of the priority application will suffice.
2. It is important that the goods and services stated in the Philippine application be covered or included in the foreign priority application. It is no longer necessary to adopt the specification of goods and services of the foreign priority application verbatim. However, the inclusion of goods and services outside those of the foreign priority application may lead to an office action.
3. Applicants are invited to pay the allowance fees within six months from the mailing date of the Notice of Allowance. An extension of one year may be granted if necessary. If no payment is received by IPOPHIL, the application will be abandoned. In the event that the application is abandoned for failure to pay the allowance fees, a revival may be filed, but the claim for Convention priority will be automatically waived.
4. Once the foreign application is registered, the applicant shall inform IPOPHL. A photocopy of the priority registration will suffice if the foreign IP Office does not have an online database in the English language.
All pending applications as of May 2013 are covered by the new guidelines except those subject to Provisional Allowance (first or second provisional allowance) and those with pending requests for Provisional Allowance under the old Trademark Rule No. 168.
Source: INTA Bulletin, Vol. 68 No. 21, Patrick mirandah co., philippines, inc., Taguig
Verified by Diageo Philippines, Inc., Taguig
Dec 03, 2013 (Newsletter Issue 17/13)
Online Registration without Signature
The German Patent and Trade Mark Office ( DPMA) announced that, effective from 12 November 2013, it is now possible to file trademark and design applications electronically without a signature.
Source: www.dpma.de
Dec 03, 2013 (Newsletter Issue 17/13)
E-Filing Soon
The Romanian PTO is planning to introduce electronic filing of trademark applications via its website by the end of 2013 or in early 2014. The electronic filing system for designs is expected to follow in 2014.
The PTO also improves its online databases and search tools in order to enable better, easier access to trademark and design registrations databases.
Source: www.petosevic.com
Dec 03, 2013 (Newsletter Issue 17/13)Trade Marks (Isle of Man) Order 2013 in ForceThe Trade Marks (Isle of Man) Order 2013 from 9 October 2013 has been in force since 11. November 2013.
This Order modifies the Trade Marks Act 1994 in its application to the Isle of Man. It replaces the Trade Marks Act 1994 (Isle of Man) Order 1996 (S.I. 1996/729) as amended, and makes additional modifications to correspond to the amendments made to the Act (as it has effect in the United Kingdom) by the Trade Marks (International Registrations Designating the European Community, etc.) Regulations 2004 (S.I. 2004/2332), the Serious and Organised Crime and Police Act 2005 (c.15), the Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006/1028), the Trade Marks (Earlier Trade Marks) Regulations 2008 (S.I. 2008/1067) and the Legal Services Act 2007 (Functions of an Approved Regulator) Order 2009 (S.I. 2009/3339).
For more information, please check The Trade Marks (Isle of Man) Order 2013
Source: www.legislation.gov.uk and Squire Sanders (UK) LLP, UK Dec 03, 2013 (Newsletter Issue 17/13)
New IP Law Soon Expected
The new law No. 23-13, amending and completing the basis law No. 17-97 was approved by the Government council in Morocco on September 12, 2013.
The draft law was forwarded to the competent authorities for further review and approval. According to the Moroccan Trademark Office, the law might be probably implemented early 2014.
Source: Saba & Co. IP – Head Office, Lebanon
Dec 03, 2013 (Newsletter Issue 17/13)
Revision of Formalities
The Trademark Office in Gaza is requesting notarized power of attorney for the filing of oppositions, instead of simply signed with immediate effect. The original PoA notarized should be submitted at the time of filing and it is not possible to obtain an extension of time to file the opposition.
Source: Saba & Co. IP – Head Office, Lebanon
Nov 18, 2013 (Newsletter Issue 16/13)
E-Filing System Completed
The Iranian Industrial Property Office (IIPO) has developed the e-filing system for trademarks, patents, and industrial designs.
Article 167 of the by-law of Patents, Industrial Designs, and Trademarks Act has stipulated that the Registration Authority is required to provide all necessary infrastructures in order to facilitate electronic filing in all the steps of the trademark, patent, and industrial design registrations for both national and international applicants.
Following this guideline, the IIPO launched a website to accept all applications for patent and industrial design registrations since June 2012.
In the second stage of this project, in November of the same year, the portal was developed to accept all applications for trademark registrations and the follow-up process. At this point, the Trademarks Office no longer accepts applications manually and in person; all applicants are required to submit their trademark application electronically and through the website.
In the early stages of this project only a few steps were handled electronically, i.e., initial submitting of the application, announcement, and publication; however, the system was improved during the following months, and now all objections, either objection to a trademark, patent, and industrial design application refusal, or opposition against a trademark application, must be submitted electronically as well.
At this time the development is completed. The whole process of IP registration can and should be filed electronically.
Source: Hossein Badamchi, Ph.D., Reza Badamchi & Associates, Tehran, Iran
Nov 18, 2013 (Newsletter Issue 16/13)
Accession to Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Benelux Organization for Intellectual Property, on October 8, 2013, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to BOIP, on January 8, 2014.
On that date and in accordance with Articles 26 and 28 of the Treaty, the Member States of BOIP, that is, Belgium, Luxembourg and the Netherlands, will become bound by the Singapore Treaty.
Source: www.wipo.int
Nov 18, 2013 (Newsletter Issue 16/13)Fee Calculator Service LaunchedThe Russian Patent Office has launched the new service “Calculator of Intellectual Property objects fees” on its website. The service is in a development stage and works in the test mode. Users can already use it. However, currently it is available in Russian only.
The fee calculator can be accessed here
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Nov 18, 2013 (Newsletter Issue 16/13)
E-Filing Soon
The Bulgarian PTO introduced an online tool for electronic filing of trademark applications on November 15, 2013. The users are able to submit applications through Bulgarian PTO’s website.
The tool was developed as a result of cooperation between the Office for Harmonization in the Internal Market (OHIM) and the Bulgarian PTO.
Online tools for electronic renewal, electronic filing of oppositions and requests for revocation and invalidity are expected to follow soon.
Source: Patent Office of the Republic of Bulgaria and PETOŠEVIĆ
Nov 18, 2013 (Newsletter Issue 16/13)
Official Publication Fees Reduced
On August 26, 2013 the Ministry of Internal Affairs and Public Safety assumed the administration of the Chilean Official Gazette and published on the same date a new price list for publication services provided by the Official Gazette. The prices are calculated over the basis of certain fixed rates plus a variable amount calculated on a "per character basis". There was a decrease in the gross "per character" price from CLP 33 to CLP 19 (to the final price -fixed fees plus variable fees- a 19% VAT has to be added when the service is actually requested). This change implies roughly a 45% price reduction in all publications made in the Chilean Official Gazette.
Since all trademark and patent applications are subject to a mandatory publication for pre-grant opposition purposes during the first stages of the application proceedings, this general price reduction has had an impact in publication fees applicable to industrial property rights (IPR) applications. The Chilean National Industrial Property Institute (INAPI) through a press release issued on October 9, 2013 praised the measure which, as previously explained, accounts for nearly a 45% reduction in publication expenses for abstracts on IPR applications prosecuted before INAPI, as the same reduces overall costs for the registration of trademarks in Chile thus aligning with the ultimate goal of INAPI of promoting and developing the protection of IPRs in Chile.
Source: Baker & McKenzie, Chile
Nov 18, 2013 (Newsletter Issue 16/13)
Online Pre-Filing Available
The Trademark Office in Guatemala has recently implemented online filing through its website.
At this time only pre-filing is available. All pertinent information can be digitally submitted and stored under a provisional serial number but a physical application has still to be submitted and a definitive serial number is assigned. The filing date assigned will be the one in which the physical application is filed at the Trademark Office.
It is expected that the filing process will become entirely digital once the IP laws will be amended.
Source: Bufelco Propiedad Industrial, Guatemala
Nov 15, 2013 (Newsletter Issue 16/13)Madrid Protocol Application Form Updated IPONZ has made some changes to its international application form for the Madrid Protocol in order to facilitate the submission. For more information please click here.
Source: www.iponz.govt.nz Oct 15, 2013 (Newsletter Issue 15/13)USPTO Operation StatusThe United States Patent and Trademark Office (USPTO) announced that during the general government shutdown which began October 1, 2013, the office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. They continue to assess their fee collections compared to their operating requirements to determine how long they will be able to operate in this capacity during a general government shutdown. USPTO will provide an update as more definitive information becomes available.
Should USPTO exhaust these reserve funds before the general government shutdown comes to an end, the office would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Should a USPTO shutdown become necessary, details of the agency’s plan for an orderly shutdown are available on page 83 of the United States Department of Commerce’s shutdown plan. Please check here
Source: www.commerce.gov Oct 15, 2013 (Newsletter Issue 15/13)
Singapore Treaty Ratified by LU
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Grand Duchy of Luxembourg, on September 3, 2013, of its instrument of ratification of the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The Grand Duchy of Luxembourg being a Member State of the Benelux Organization for Intellectual Property, the said Treaty will enter into force with respect to the Grand Duchy of Luxembourg at a later date, in accordance with Articles 26 and 28 of the said Treaty.
Source: www.wipo.int
Oct 15, 2013 (Newsletter Issue 15/13)
General eService Introduced
On 31 August 2013, IP Australia introduced the "General eService" functionality to its online services.
This latest enhancement allows the ability to submit over 150 of the remaining transaction/service request types including amendments, assignments, extensions of time, opposition matters and responses to examination reports for all IP right types.
IP Australia is due to complete all inbound transactions in late 2013. To support this improved functionality, work is underway to develop a solution to provide these services during maintenance periods or outages.
In light of increasing customer demand for eServices, IP Australia anticipates considering the ongoing operational viability of the traditional transaction channels, including assist e-mail, over the phone payments and corporate fax. It is anticipated that a transition from these channels is likely to occur in early to mid-2014.
Source: www.ipaustralia.gov.au
Oct 15, 2013 (Newsletter Issue 15/13)Madrid Protocol Enters into ForceThe Madrid Protocol (1989) enters into force, with respect to the Republic of Tunisia, on October 16, 2013. The opposition period against international registrations designating Tunisia is sixty days starting from the publication of the advertising in the Tunisian official gazette.
For more information please check here
Source: www.wipo.int Oct 11, 2013 (Newsletter Issue 15/13)
Official Fees Increased
On September 11, 2013, the Venezuelan Patent and Trademark Office informed the general public about the enforceability of a new tax rate based on the Special Act for the Fiscal Stamp in the Capital District, published on May 2nd, 2012.
This new rate of 10 tax units is equivalent to Venezuelan Bolivars (BsF) 1,112.80; or US$ 177.19, as per the Official Currency Exchange rate.
Accordingly, the Venezuelan Patent and Trademark Office will apply this new rate for:
1) The filing of new trademarks, trade names and slogans, and;
2) The filing of new applications for patents of invention, utility models, industrial designs and improvements thereof.
Source: Hoet Pelaez Castillo & Duque, Venezuela
Oct 10, 2013
Introduction of New Provincial Administrative Courts
The introduction of new provincial administrative courts in Austria will change administrative provisions in several IP statutes that will become effective on January 1, 2014.
The amended Trademark Act contains important changes, one of which concerns the concentration of all trademark disputes with the Vienna Commercial Court. At the present, the court has exclusive jurisdiction for patent disputes, as well as disputes regarding utility models, solid-state contractors and designs. In the future, this exclusive competence will also include trademark disputes. The Trademark Act also concentrates criminal proceedings - to be initiated at the request of trademark holder only - with the Vienna Regional Criminal Court.
The amended Trademark Act also changes the rules for opposition proceedings. In future, the holder of a more recent trademark must argue non-use of the older trademark no later than the first response to the opposition. If the holder of the younger mark does not respond within the prescribed time limit to the opposition, the younger trademark will automatically be cancelled in whole or in part as applied for, even if the opposition is based on a trademark application only which has not yet proceeded to registration at the time at which the opposition is decided on.
In addition, in the future it will no longer be possible to raise opposition against trademarks that are registered in Austria due to the conversion of Community trademarks or international trademarks (with regard to the latter, where the declaration as to the grant of protection has already been transmitted and the period to deny protection has already expired).
Finally, two objection periods will be shortened under the new law. The objection period to oppose an application for registration of a name as a geographical indication will be shortened from four to three months. The objection period to oppose an application pursuant to Regulations (EU) 1151/2012 on Quality Schemes for Agricultural Products and Foodstuffs will be shortened from three to two months.
Source: Graf & Pitkowitz Rechtsanwälte GmbH, Austria
Oct 01, 2013 (Newsletter Issue 14/13)
Trademark Office Moved
The Iranian Industrial Property Office has moved to new premises. The purpose is, among others, to gather the Trade Marks Office, Patent Office and Industrial Property Office in one location which were disseminated in Tehran.
The new building is located in the center of Tehran, by the State Department of Registration of Deeds and Properties. The address of the Industrial Property Office is as follows:
Industrial Property Office
No. 5, Fayaz Bakhsh Street
Khayyam Street
Tehran 11146-78111
Iran
Tel/Fax: +98 (21) 66741035
President: Mohammad Hassn Kiani
The Trademark Office is fully operational in the new building. However, nearly all types of applications are filed online on the Trademark Office Electronic Application System.
Source: Raysan Patent & Trademark Agents, Iran
Oct 01, 2013 (Newsletter Issue 14/13)New Fast-Track TM Opposition ProcedureThe Trade Mark Rules 2008 has been amended to provide for an additional fast track opposition procedure under the Trade Mark Act 1994. The new procedure is available from October 1, 2013.
The main points of the new fast-track opposition are as follows:
- The opposition is based solely on relative grounds under sections 5(1) and/or 5(2) of the Trade Marks Act 1994, namely that the opponent owns an earlier trade mark application or registration protecting a trade mark that is either identical or similar to the applied for mark and, except in cases of double identity, there exists a likelihood of confusion between the marks. The fast track procedure will not be available in cases where the opponent seeks to rely upon alternative grounds. The number of earlier marks which can be relied upon in a fast-track opposition is limited to three UK or Community marks.
- Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition. Where the requirements of a fast-track opposition in this regard are not met but the requirements of a conventional opposition are, the registrar shall have discretion to treat a fast-track opposition as a conventional opposition.
- Leave must be obtained to file any evidence other than the Proof of Use submitted with the opposition.
-The official fee for the filing of a fast track opposition is £100. The official fee for a conventional opposition is reduced to £100 from October 1, 2013, provided that the opposition is based only on sections 5(1) or 5(2) of the Act.
- Provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer. Hearings may be conducted by telephone rather than in person.
It is expected that the fast track opposition proceedings lasts approx. 6 months in contrast to the 12-18 month duration of standard opposition proceedings.
For more information, please check The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment No. 2) Order 2013
Source: Dehns Patent and Trade Mark Attorneys, UK;
www.ipo.gov.uk and www.legislation.gov.uk Oct 01, 2013 (Newsletter Issue 14/13)
Regulatory Authority for Certification Marks
In addition to the examination that all trademark must go through - namely an assessment of their distinctiveness, descriptiveness and likeliness of confusion with other trademarks-certification marks must also be examined by the applicable regulatory authorities. Up to July 31, 2013, many certification marks were being rejected by the TMO on the ground that the regulations lacked the approval of a local competent authority.
Now, the Trademark Office (TMO) appointed the Costa Rican Entity for Accreditation (ECA) as the authority having jurisdiction to approve certification mark regulations.
Source: Zurcher Lawyers, Costa Rica and FH Legal, Costa Rica
Oct 01, 2013 (Newsletter Issue 14/13)Electronic Filing Now PossibleThe Saudi Trademark Office announced that it has started receiving electronic filing of new trademark applications.
According to the Office, all attorneys and agents can file their trademark applications through the new system in Saudi Arabia which will be under testing for a limited period of time.
The new filing system requires uploading the legalized Power of Attorney to be submitted in original copy.
The new filing system will capsulize the trademark registration process which may be complex and requires the necessity to meet many requirements within strict time deadlines.
Source: JAH & Co. IP, Qatar Oct 01, 2013 (Newsletter Issue 14/13)
Official TM Renewal Fees Amended
The Syrian Trademark Office (TMO) has announced that it applied a new practice related to fees paid for trademark renewal applications. The new practice requires paying publication fee per each class of the renewal application. Previously, this fee was paid for a multi-class renewal application.
This practice will be applied on trademarks which have been renewed and their renewal certificates have not yet been issued, as the Trademark Office (TMO) has suspended issuing the renewal certificates until the additional retroactive fees are paid to cover each class.
As from 2017, the first publication of renewal application will be ceased in Syria, and the renewal application will not be published for opposition.
Source: www.agip.com
Oct 01, 2013 (Newsletter Issue 14/13)Gazette Published Fortnightly SoonThe State Intellectual Property Office decided to publish the Croatian Intellectual Property Gazette once in two weeks, instead of once a month in order to accelerate the industrial property registration and granting procedures.
In accordance with the same, the appearance and structure of the Gazette will be adapted appropriately to the increased publication dynamics and the electronic medium in which it has been published.
The scope and content of the data related to the industrial property granting procedures to be published in the Gazette will remain unchanged, whereas the static contents with reference data and information will be singled out to separate menus on the web site of the Office on which the Gazette has been published.
The first issue of the Gazette to be published using new two-week publishing dynamics will be published on October 11, 2013, and from that date on, the Gazette will be published once in two weeks on Fridays according to the schedule which may be seen here
Source: www.dziv.hr Oct 01, 2013 (Newsletter Issue 14/13)
Official Fees Increased
According to the decrees of the Cabinet of Ministers Nos. 208 and 209 of the republic of Azerbaijan official fees for trademarks have been changed as of August 25, 2013.
The major changes in the fees relating to trademarks are the following. Official fee for filing a trademark application in black and white execution has become AZM 201 for one class in contrast to the earlier stipulated AZM 60 for up to 5 classes. Besides, according to former regulations black and white and color trademarks were charged equally, while currently official filing fee for a color trademark is higher than for a black and white one.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Oct 01, 2013 (Newsletter Issue 14/13)TM Practice Guideline UpdatedIPONZ has updated the trade mark practice guidelines and maintain a trade mark explaining how a trade mark registration can be partially renewed.
Trade mark owners wanting to partially renew their trade marks will have two options: either alter their registered or expired but restorable trade mark by striking out classes of goods and services, or dividing their registered trade mark.
Alteration:
If the owner of the trade mark is certain they only wish to renew in a certain class or classes they should strike out the class or classes they do not wish to renew. The struck out class or classes will immediately cancel.
Divisional:
If the owner of the trade mark is uncertain which class they wish to renew they should divide the registration. The classes which they are uncertain if they wish to renew should be divided out into a separate trade mark registration. This would allow these classes to remain at expired but restorable status until the end of the one year period.
The request to alter or divide a trade mark can take up to 15 working days to be processed. Therefore, requests to alter or divide a trade mark should be made in advance of the renewal date of the trade mark registration.
For further information on the practice guidelines, please check here
Source: www.iponz.govt.nz Oct 01, 2013 (Newsletter Issue 14/13)Fine for Late Renewal IncreasedThe fine for late renewal has been increased according to the Ministerial Decree No. 12285/2013. The fee for late renewal is MGA 40,000 effective from July 1, 2013.
For further information on official fees, please check here
Source: Cabinet Hanna Keyserlingk, Madagascar Sep 17, 2013 (Newsletter Issue 13/13)Recognition of Well-known Marks RevisedThe Brazilian Patent and Trademark Office (INPI) published a the Resolution No. 107/2013, on 20 August 2013. It simplifies the process of obtaining recognition as famous or well-known Trademark. The request can be done autonomously to the Institute. It no longer has to be based on proceedings against applications for allegedly infringing marks.
Further, the duration of the recognition as a well-known mark was raised from 5 years (previous resolution) to 10 years.
Resolution no. 107 will come into force as soon as the fees for the service are fixed. Pending requests for recognition as a well-known mark will be required to be confirmed by the respective trademark owners.
For further information, please also check the article of Ms Ana Lúcia de Sousa Borda, Dannemann Siemsen Advogados here
Source: www.inpi.gov.br and Dannemann Siemsen Advogados, Brazil Sep 17, 2013 (Newsletter Issue 13/13)Significant Changes to IP PracticeThe Benelux Office for Intellectual Property (BOIP) has announced significant changes to the IP practice starting on or after 1 October 2013.
This affects the following:
- English as a working language: English becomes a working language next to the official languages Dutch and French.
- New way of calculating the opposition period: The opposition period of two months shall be calculated from the date of publication instead of from the first day of the month after the publication date.
- Modification of the period for suspension of oppositions: Extension of the cooling off period on the joint request of both parties will be 4 months instead of 2 months
- Simplification of the procedure for renewal of a trademark: E-filing of renewal application is accompanied with an e-payment module.
There will also be some other changes. The exact date of which is not yet known, but this is expected for the end of the year. It concerns the following points:
- E-filing of international filings
- E-filing of design filings
- Implementation of TMclass
Source: www.boip.int and Landmark Trademark Protection, The Netherlands Sep 17, 2013 (Newsletter Issue 13/13)Local Trademark Regulation in French PolynesiaFrench Polynesia adopted a local trademark regulation, with the local Law n°2013-14 dated May 6, 2013 and the Local Decree n°1002/CM dated July 22, 2013.
In this new system, the former competences of the French national Office (INPI) are transferred to a local Polynesian Administration.
Owners of French national trademarks looking for protection in French Polynesia have to be especially vigilant as to the filing date of their French trademarks, which determines the action to be taken and the scope of protection:
- The recognition of currently valid French trademarks filed prior to March 3, 2004 (date of the autonomy Law of French Polynesia) is automatic in French Polynesia.
- The recognition of currently valid French Trademarks filed between March 3, 2004 and August 31, 2013 is optional. In this case, the protection in French Polynesia is subject to four requirements, namely a formal recognition request filed by the applicant before August 31, 2015 with the local Polynesian Administration (1), the payment of official fees (2), a formal recognition by Decree of the President of French Polynesia (3), and the publication of this Decree in the official Polynesian Gazette (4)
- From January 1st, 2014, applicants filing new French trademark applications with INPI will have the possibility to extend the protection in French Polynesia, subject to the payment of the corresponding tax. However, there is no precision regarding the period between August 31, 2013 and January 1, 2014.
- From the second semester of 2014, applicants willing to protect their trademarks in French Polynesia only (not in France) will have the possibility to file a direct application with the Polynesian Administration.
There is still a grey area for the period between September 1, 2013 and December 31, 2013 as no regulation have been issued yet.
Source: Ab Initio, France Sep 17, 2013 (Newsletter Issue 13/13)Ongoing Reform in New CaledoniaAfter shifting certain legislative functions from mainland France to New Caledonia on July 1, 2013, New Caledonia is from now competent regarding the protection of intellectual property rights on its territory.
On August 27, 2013, the government of New Caledonia adopted a draft law on the temporary protection of IP rights. The definite local IP Law applicable in New Caledonia is expected for July 1, 2014 at the latest.
Until the official issuance of the local Law, French intellectual property rights, including French mainland trademarks applied for or registered by the INPI as from July 1, 2013, will also be valid in New Caledonia.
There is no precision in the draft law yet as to whether Community Trademarks and International Trademarks designating France also cover New Caledonia.
New Caledonia authorities are considering a partnership with the French mainland Office (INPI) for handling the legal formalities of protection of intellectual property rights on its territory.
Source: Ab Initio, France Sep 17, 2013 (Newsletter Issue 13/13)Amendments to Trademark Law AdoptedOn 30 August 2013, the Standing Committee of the National People's Congress (NPC) concluded its session, adopting the third amendment to the Trademark Law. The new amendment will become effective as of 1 May 2014.
Some of the most notable amendments are below:
- Application for registration of sound permissible
- Introduction of multi-class applications
- Definite timeframe for trademark examination
- Application for renewal can be made within 12 months before expiration date
- Licenses only enforceable against bona fide third parties upon recordal
- Simplified opposition procedures
For further information on the amendments, please also check the article of Xiang Gao, Peksung Intellectual Property Ltd. here
Source: www.npc.gov.cn and Peksung Intellectual Property Ltd., China Sep 17, 2013 (Newsletter Issue 13/13)
Accession to Nice Agreement
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify him of the deposit by the Government of New Zealand, on July 16, 2013, of its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.
The accession will not be extended to Tokelau unless a separate declaration to that effect is deposited with the WIPO.
The Nice Agreement will enter into force with respect to New Zealand on October 16, 2013.
Source: www.wipo.int
Sep 17, 2013 (Newsletter Issue 13/13)Accession to Madrid ProtocolThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to notify the deposit by the Government of the Republic of Tunisia, on July 16, 2013, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
The said instrument contained the following declarations:
- The time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months and under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- Tunisia, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol (1989) will enter into force, with respect to the Republic of Tunisia, on October 16, 2013.
Source: www.wipo.int and JAH & Co. IP, Qatar Sep 17, 2013 (Newsletter Issue 13/13)Official Trademark Renewal Fees IncreasedThe Swiss Federal Institute of Intellectual Property has increased its fees for trademark renewals. The fee will increased from CHF 550 to CHF 700 starting from January 1, 2014.
Source: Isler & Pedrazzini AG, Patent & Trademark Attorneys, Switzerland Sep 17, 2013 (Newsletter Issue 13/13)Expedited Examinations Abolished A new Notice of Practice has been published on June 14th, 2013 by the Canadian Intellectual Property Office regarding requests for expedited examinations.
It has been decided that the Registrar will no longer consider and accept requests for expedited examinations, given that examination now generally occurs within six (6) months of the application.
This previous Notice of Practice on this matter was published February 23rd, 2000. This Notice of Practice is no longer available on the CIPO website. Back then, examinations could take up to 28 months, creating the need for expedited examinations. Requests for expedited examinations had to be in the form of an affidavit or statutory declarations. Since examination delays are much shorter now, expedited examinations have been abolished. The current turnaround time seems to realistically be between six (6) to eight (8) months.
Source: Source: Joli-Coeur Lacasse Avocats, Canada Sep 03, 2013 (Newsletter Issue 12/13)Electronic Official Gazette IntroducedThe Egyptian Trademark Office has introduced an electronic Official Gazette which is available in PDF format and is published on the 7th day of each month.
This electronic version contains the particulars of each accepted trademark application, a list of cancelled and renewed registrations. It also contains the particulars of the approved Recordals of License Agreements and Transfers of Ownership, as well as the particulars of international registrations designating Egypt. The applicant should carefully review the information that appears in the TMOG for accuracy. Any interested party may file an opposition against a published trademark within 60 days from publication date.
Source: JAH & Co. IP, Qatar Sep 03, 2013 (Newsletter Issue 12/13)Publication of Appeal Decisions The Ministry of Trade and Industry in Yemen has issued the Ministerial Decision No. 72 of 2013 related to the publication of appeal decisions.
According to the Ministerial Decision, the appeal decisions and Appeal Committee recommendations will be published at the Official Trademark Gazette "Al-Tijarah" issued by the Yemini Ministry of Industry and Trade. The publication notice will basically include the names of the parties and the trademarks involved, the nature of the case, the date and final decision that has been rendered.
Moreover, the decision stipulates that each appeal is subjected to fee of publication. The ministerial decision has been applied upon its issuance on June 10, 2013.
Source: JAH & Co. IP, Qatar Sep 03, 2013 (Newsletter Issue 12/13)Official Publication Fees IncreasedThe Ministry of Industry and Trade in Yemen, increased the official fees for the publication of IP related matters in the Official Gazette of August 24, 2013.
The increase is applied to all IP issues (trademarks, patents, industrial designs and drawings, etc…).
Source: JAH & Co. IP, Qatar Sep 03, 2013 (Newsletter Issue 12/13)Official Weekend ChangedPursuant to Ministerial Decree No. 179 of 2013, the official weekend in Yemen has changed from Thursday - Friday to Friday – Saturday with effect as August 17, 2013. All deadlines falling on a Friday or a Saturday will move to the first working day following the due date. The same applies to national holidays.
Source: JAH & Co. IP, Qatar Sep 03, 2013 (Newsletter Issue 12/13)
New GI Law in Force
The new Law on Geographical Indications (GIs) and Designations of Origin (DOs) entered into force in Kosovo on July 19, 2013.
According to the new law, GIs can be registered at Kosovo’s IPO. Any GI in the name of a region, a specific place or in special cases the name of a state, which is used to describe a specific product originating from that region or state can be registered.
Registered GIs or DOs will be protected against any direct or indirect commercial use of products that are not registered, any misuse, imitation or infringement, each inaccurate (false) or misleading indication in terms of genealogy, origin, nature or essential qualities of the product, and every other practice or action that may mislead the consumer as to the true origin of the product.
Legal protection of GIs and DOs as foreseen by the new law covers several actions, including the procedure of finding and stopping the infringement, the application for the seizure and destruction of products, and the application for damage compensation. Moreover, the law includes penalty provisions including monetary fines in various amounts depending on different categories.
Source: SDP KOSOVE, Kosovo
Sep 03, 2013 (Newsletter Issue 12/13)GIs Published for OppositionGeorgia’s National Intellectual Property Center (Sakpatenti) published a special edition of the Official IP Gazette with a list of 172 agricultural and food products that have a protected geographical indication (GI) status in the European Union (EU) on July 31, 2013.
The special edition follows the April 2012 agreement between Georgia and the EU, within the framework of which more than 3,000 EU’s GIs for agricultural products and foodstuffs received protection in Georgia. The list has since grown and therefore the Gazette includes additional 172 GIs that the EU submitted for protection on the territory of Georgia.
The published GIs can be appealed before Sakpatenti’s Board of Appeals within three months from their publication and can be seen here
Source: www.petosevic.com and www.sakpatenti.org.ge Sep 03, 2013 (Newsletter Issue 12/13)
Accession to Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Federal Republic of Germany, on June 20, 2013, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Federal Republic of Germany, on September 20, 2013.
Source: www.wipo.int
Sep 03, 2013 (Newsletter Issue 12/13)
Opposition Proceedings Soon Changed
The Benelux Office for Intellectual Property (BOIP) has announced that the opposition period shall be calculated from the date of publication with effect from October 1, 2013.
This change is related to the fact that trademark applications are no longer published monthly but on a daily basis.
Source: www.boip.int
Sep 03, 2013 (Newsletter Issue 12/13)
Accession to Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Armenia, on June 17, 2013, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Armenia, on September 17, 2013.
Source: www.wipo.int
Sep 03, 2013 (Newsletter Issue 12/13)Online Filing Now PossibleThe Industrial Property Office of the Slovak Republic provides its clients a new service - electronic filing of trade mark applications from July 1, 2013. The Office thus confirmed one of its priorities - providing on-line services in favour of an effective proceeding for each type of industrial property subjects. The project was co-funded by the Office for Harmonisation in the Internal Market (OHIM) located in Alicante.
The service is available on here by clicking on TM eFiling.
At present the filing is not possible to be signed by an electronic signature/guaranteed electronic signature, therefore it is necessary to file the written form of an application within one month. Otherwise such filing shall be deemed not to be filed. Discount of the fee for filing shall not be applied for filing a trade mark application.
Source: www.indprop.gov.sk Jul 16, 2013
Amendments to IP Law Expected
A new Draft Law on Industrial Property, intended to replace the current Industrial Property Act 1991, was introduced in the Chilean National Congress on 26 April 2013.
In addition to strengthening the mechanism for enforcing industrial property rights and improving registration procedures, the new law is expected to boost innovation, encourage knowledge transfer and enable consumers to better distinguish products and services.
Jul 16, 2013 (Newsletter Issue 11/13)
Official Fees Increased
As of July 1, the official trademark fees increased in Argentina. The official trademark filing fee is ARS 600 (approx. USD 110) per class. There are no special fees for additional classes. The publication fee is already included in the filing fee as long as the trademarks are not bigger than 6 cm x 6 cm.
If they are bigger than 6 cm x 6 cm up to a third part of the bulletin page, an additional payment must be done. This payment depends on the size and goes from USD 22 to USD 70.
Source: Moeller IP Advisors, Buenos Aires, Argentina and Lauritsen & Asociados, Buenos Aires, Argentina
Jul 16, 2013 (Newsletter Issue 11/13)New Trademark Examination ManualThe Canadian Intellectual Property Office has released the new version of its Trademarks Examination Manual. The new version can be accessed here
Source: Robic LLP, Canada
Jul 16, 2013 (Newsletter Issue 11/13)Official Trademark Fees in KurdistanThe Trademark Office of Erbil, the capital of Kurdistan Al Iraq Region, announced that the trademark charges in Kurdistan will be the same as adopted by the Trademark Directorate of Baghdad, as per the decision issued by Kurdistan Presidency Council No. 3306 dated April 1, 2013 and published at the Kurdistan Official Gazette.
Accordingly, starting from the beginning of June 2013, the following will be applied:
- Cancellation of the previous charges issued by the Ministry of Finance of Kurdistan. However, the charges will be interpolated as per the registration phases mentioned in the amended Trademark Law No. 21 of 1957.
- All trademark applications which have been accepted and published will be subject to the previous trademark charges.
- As from June 1, 2013 the new trademark charges will be applied according to the newly adopted tariff. Charges will be paid by each registration phase including examination phase, filing, publication, as well assignment, change, merger, cancellation, etc….
- The amended Trademark Law No. 21 of 1957 will be enforced with regard to the legal period of each phase of registration.
- Filing applications will be conducted using the legal forms available at the Trademark Office of Kurdistan in Arabic and Kurdish.
It is worth mentioning that the trademarks already registered in Baghdad could be protected in the Kurdistan Region through obtaining a certified copy of the certificate of registration of the subject mark. It must be attached to a certification letter from the Trademark Directorate of Baghdad addressed to the Trademark Office of Erbil which confirms the registration of the trademark in Baghdad. Also note that this service is chargeable.
Source: JAH & Co. IP, Qatar Jul 16, 2013 (Newsletter Issue 11/13)
Official Fees Increased
The Intellectual Property Office of Portugal has increased its official fees under Administrative Order No 1376-A/2013.
The fee for filing a trademark is now EUR 123.36 online and EUR 246.72 in paper for one class. Each additional class is EUR 31.27 online and EUR 62.54 in paper.
Source: www.marques.org
Jul 16, 2013 (Newsletter Issue 11/13)
Advertisement of Accepted Trademarks Changed
The Egyptian Trademark Office (EGTMO) has started to publish the accepted trademarks online as of the end of May 2013, and the hard copies of Official Gazettes are no longer issued. While the first trail copy appeared at the end of April 2013 along with hard copy.
It is worth mentioning that the data displayed in the EGTMO website will include the published trademarks only.
Source: www.njq-ip.com
Jul 16, 2013 (Newsletter Issue 11/13)Electronic Official Gazette ImprovedThe United States Patent and Trademark Office has posted a beta version of a new and improved electronic Official Gazette (eOG) at http://eog-test.etc.uspto.gov/. This version is in a tagged XML format and permits tailored searching, downloads and a variety of additional features.
USPTO appreciates feedback under https://www.surveymonkey.com/s/83BN9PK.
Source: www.uspto.gov Jul 16, 2013 (Newsletter Issue 11/13)
TM Specifications and Duplicated Terms
IPONZ will no longer raise objections where the specification of goods and/or services contains duplication. The onus will be on the applicant to file correctly and ensure that specifications of goods and/or services do not include any duplicated terms.
An objection will only be made by the Office where the duplicated term(s) causes the specification or goods and/or services to be unclear.
Source: www.iponz.govt.nz
Jul 16, 2013 (Newsletter Issue 11/13)Change of PracticeThe Trademarks Registry has issued a notification that Art. 10 of the IP Code for verification of applications will be taken seriously. Applications, renewals and so forth shall be submitted simultaneously with the Power of Attorney from now onwards in order to avoid constraints.
Article 10 of the IP Code, which is in force in Mozambique states:
1. When an application is filed, the officers in charge of receiving the documents shall verify that the applications are correctly addressed, that they are duly signed, that the correct amount of fees is being paid and that all documents referred to in the application are attached thereto.
2. Notification shall be given of any omissions found subsequently.
3. The applicant shall have 15 days from the date of the notification within which to supply the missing or incorrect information.
4. If the provision of the preceding paragraph is not observed, the applicant will be considered to have surrendered the application.
Source: JAH & Co. IP, Qatar Jul 02, 2013 (Newsletter Issue 10/13)Official Weekend ChangedPursuant to the Royal Decree issued by King Abdullah Bin Abdulaziz No. A/185 dated 14 Sha’aban 14340 H corresponding to 23 June 2013, the official weekend in Saudi Arabia has changed from Thursday - Friday to Friday – Saturday starting 29 June 2013, to align its banking and business days with most of the region and to better serve its economy and international commitments.
Source: JAH & Co. IP, Doha, Qatar Jul 01, 2013 (Newsletter Issue 10/13)
Licence Recordal of IR
India has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in India.
A license relating to an international registration of a mark which has been granted with respect to India shall, in order to have effect in that country, be recorded in the national Register of the Office of India. The formalities required for such recording must be completed directly with the Office of India and according to the conditions laid down by the legislation of that Contracting Party.
The notification enters into force on the date of entry into force of the Madrid Protocol with respect to India, namely, July 8, 2013.
Source: www.wipo.int
Jul 01, 2013 (Newsletter Issue 10/13)New Application GuidelinesOn 27 May 2013, INPI published new guidelines on the application of the Portuguese Industrial Property Code. This document was on a public consultation phase until 27 June 2013 and can be found here (Portuguese version only).
These guidelines do not constitute a law and their purpose is to work as an orientation guide for INPI's examiners, contributing to the standardization of criteria and procedures followed in assessing the actions relating to industrial property rights, with gains to predictability, consistency and coherence of the decisions that are made on a daily basis by the Office. The new guidelines aim also to be an useful tool to the outside, assisting applicants, holders and other interested parties in their interaction with INPI.
Source: www.marques.org Jul 01, 2013 (Newsletter Issue 10/13)
Declaration of Use of IR Required
The Philippines has notified the WIPO that holders of international registrations containing a designation of the Philippines must file declarations of actual use of the mark with evidence to that effect.
Such declarations must be filed directly with the Office of the Philippines, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a three year period, counted from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines. A one-time six month extension of the three-year period to file the aforementioned declaration may be requested, provided that such request is filed before the expiry of the said period;
- Within a one-year period, following five years counted from the date on which protection was granted in the Philippines, as indicated in the statement sent by the Office of the Philippines to the International Bureau under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
- Within a one-year period, following five years counted from the date of each renewal of the international registration.
Alternately, within the aforementioned periods, holders may file, directly with the Office of the Philippines, in the manner prescribed by the applicable laws and regulations and upon payment of a fee, a declaration of non-use of the mark, stating the valid grounds, under the laws of the Philippines, for such non-use.
The declaration of actual use or non-use of the mark must be submitted by the holder’s authorized representative with a local address or by a legal representative in the Philippines. A local address is required for purposes of notification.
Failure to file declarations of either actual use or non-use of the mark, within the applicable periods, will prompt the Office of the Philippines to declare, ex officio, that protection to the mark which is the subject of an international registration containing a designation of the Philippines cannot or can no longer be granted.
Source: www.wipo.int
Jul 01, 2013 (Newsletter Issue 10/13)
Official Publication Fees Increased
As of June 3, 2013, Ministerial Resolution No. 159/2013 established the increase of the official publication fees for Intellectual Property matters.
The new publication fees are established as follows:
Copyright USD 8.00 (previous fee USD 3.00)
Trademarks (word or device) USD 30.00 (previous fee USD 15.00 for word marks and USD 20.00 for device marks)
Patents USD 30.00 (previous fee USD 20.00)
With this increase the new official filing, publication and registration fees for trademarks are of USD 260.00.
Source: Bufete Aguirre Soc. Civ., Bolivia
Jul 01, 2013 (Newsletter Issue 10/13)Denunciation of Madrid AgreementThe Government of the Syrian Arab Republic has cancelled its association with Madrid Agreement for the international registration of marks. The denunciation became effective on 29 June 2013. Syria continues to be a party to the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (“the Madrid Protocol”) and therefore remains a member of the Madrid Union.
As a result, as from 29 June 2013, the Syrian Arab Republic may no longer be designated under the Madrid Agreement and countries party only to this treaty may no longer be designated under the Madrid Agreement where the Office of the Syrian Arab Republic is either the Office of origin or that of the Contracting Party of the holder. The form corresponding to applications for international registrations governed exclusively by the Madrid Agreement (Form MM1) will be updated accordingly.
International marks registered up to 29 June 2013, containing a designation of the Syrian Arab Republic, which is a designation governed by the Madrid Agreement, and not refused within the period of one year provided for in Article 5 of the Madrid Agreement, will continue, throughout the period of international protection, to enjoy the same protection in the Syrian Arab Republic as if they had been deposited there directly.
For more information, please check here
Source: www.wipo.int Jul 01, 2013 (Newsletter Issue 10/13)
Singapore Treaty Ratified
The Kingdom of Belgium, has deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks on June 7, 2013.
The Kingdom of Belgium being a Member State of the Benelux Organization for Intellectual Property, the said Treaty will enter into force, with respect to the Kingdom of Belgium at a later date, in accordance with Articles 26 and 28 of the said Treaty.
Source: www.wipo.int
Jul 01, 2013 (Newsletter Issue 10/13)Online Filing Now PossibleThe Austrian Patent Office announced its new online service starting from 1 July 2013. Applicants can now file a national trademark application online.
To access the online service, please click here
Source www.patentamt.at Jul 01, 2013 (Newsletter Issue 10/13)Accession to Vienna ClassificationThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland, on 11 June 2013, of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985.
The said instrument of accession contains a declaration that the United Kingdom of Great Britain and Northern Ireland intends to avail itself of the reservation provided for in Article 4(5) of the Agreement.
The said Agreement will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland, on 11 September 2013 and can be entered here
Source: www.wipo.int Jul 01, 2013 (Newsletter Issue 10/13)
EU Membership Effective
Croatia has joined the European Union on 1 July 2013. The standard enlargement rules will be applied to Croatia:
1. Automatic extension of CTM to the new Member States.
The moment Croatia has joined EU on 1 July 2013 all CTMs will start producing their legal effects on the territory of Croatia with no necessity for the right holders to take any action in this respect.
2. CTMs will produce legal effects only from the date of accession (1 July 2013).
The owner of CTM will not enjoy earlier rights with respect to the Croatian Trademark filed before the date of 1 July 2013.
3. Existing CTMs cannot be challenged on the basis of the argument that the same is not registrable on absolute grounds in Croatia.
Registered CTMs (or CTM Applications that passed the absolute grounds examination before Croatia joined the EU) cannot be declared invalid based on the argument that such trademark does not fulfill absolute grounds examination in the Croatian language (e.g. descriptive in Croatian) .
4. CTMs filed before 1 January 2013 cannot be disputed on the basis of Croatian prior rights. However, their use may be prohibited in Croatia.
Due to the unitary character of the CTM, it will not be possible to file an opposition or a cancellation action based on earlier national rights in Croatia, as long as the CTM was filed before 1 January 2013 (CTM Application filed between 1 January 2013 and 30 June 30 2013, can be exceptionally subject to opposition based on earlier Croatian Trademark, pursuant to Article 165(3) of CTMR).
5. Claiming seniority of the earlier Croatian Trademark
Owners of Croatian trademarks who wish to extend the protection of their rights to the EU Member States, and be able to abandon their national Croatian trademark without losing Croatian priority will now be in position to do so by claiming seniority. This possibility has three conditions: 1) identical signs; 2) identical owners; 3) identical goods/services.
However, the right holder of an earlier National Trademark in Croatia may prohibit the use of a CTM through a Court action which can be filed with the Commercial Court in Zagreb. It should be mentioned that the right holder of the CTM for which the prohibition of use has been requested with the competent court in Croatia is allowed to use the CTM (considered to be use in good faith) until the decision of the Court has become final. If the use of the disputed CTM is continued after the date when the court decision on prohibition of use has become final, such use may constitute infringement of an earlier national Trademark in Croatia, which would still need to be proven in separate proceedings.
Source: Milojevic, Sekulic & Associates, Croatia
Jul 01, 2013 (Newsletter Issue 10/13)
Official Fees Inccreased
According to the ministerial decree No. 12285/2013 on 1 June 2013, the official fees for Trademarks, Patents, Utility Models and Trade Names have increased as of 1 July 2013.
Source: Cabinet Hanna Keyserlingk, Madagascar
Jun 14, 2013 (Newsletter Issue 9/13)Online Opposition AvailableOn May 24, 2013, the Turkish Patent Institute (PTO) has made online opposition to published trademarks available.
Other online services like filing for trademark applications are available since 2007. The possibility to file for electronic trademark renewals has been made available on February 4, 2013.
Source: Istanbul Patent & Trademark Consultancy, Turkey Jun 14, 2013 (Newsletter Issue 9/13)E-filing Now PossibleThe new Trade Mark e-filing went live in the pilot office of the Finnish Trademark Office (PRV) on 5 June 2013 after an extended period of testing. This is a major milestone for the European Network, as it represents the first installation of the new core business application developed by the Cooperation Fund, which is expected to contribute significantly to the modernisation of systems across all offices including OHIM.
The Finish Trademark Office is providing a wide range of online services including services relating to notifications, applications and registrations.
Please click here for more information on services that are available in English.
Source: www.oami.europa.eu, www.prh.fi Jun 14, 2013 (Newsletter Issue 9/13)Amendments to Trademark Act IntroducedThe National Assembly recently adopted a bill introduced by the Korean Intellectual Property Office (KIPO) that will amend the Trademark Act. The amended provisions of the act will be effective from October 6 2013 and will include the following:
- Non-use cancellation actions
Non-use cancellation actions will have some limited retroactive effect under the amended bill. An application that is blocked by a senior conflicting mark will be able to overcome this issue if the senior mark is successfully cancelled by a non-use cancellation action.
- Prior use of trade names
Under the amended act, a party that uses its name, trade name or any other personal identifiers as a trademark without bad-faith intent, in accordance with customary practices, will be able to continue such use without risking trademark infringement claims from the owner of an identical or similar registered mark, provided that such use started before the application date of the identical or similar registered mark.
- Relief measures following failure to comply with filing deadline. The amendments also include relief measures for applicants that failed to file a response to an office action within the two-month deadline. Such applicants will be granted an additional two-month period from the deadline in which to file a request to reopen the examination of their applications. However, the response to the office action must be filed in combination with the request to reopen the examination.
For more information, please check the article of Kim & Chang here
Source: Kim & Chang, South Korea
Jun 14, 2013 (Newsletter Issue 9/13)
Amendments to Trademark Act
On April 1, 2013, the most recent amendments to Act XI of 1997 on the Protection of Trade Marks and Geographical Indications (Trade Mark Act) became effective. The amendments implement international agreements and EU rules into Hungarian law and introduce other significant changes to the Hungarian trade mark regulation. Set forth below is the summary of some of the most important modifications of the Trade Mark Act.
1. New limitation on enforcement of trade mark infringement claims
In court actions filed for trade mark infringement, no damages may be demanded and no other legal sanctions may be applied with respect to the period when the grounds for termination of trade mark protection materialize with respect to the trade mark holder.
2. Date of the revocation of trade mark protection
In certain cases of the revocation of the trade mark protection (e.g.: non-use of the trade mark; deceptive trade mark, etc.), the protection may also be revoked with retroactive effect to any earlier date, provided that the grounds for revocation existed at the earlier date.
3. Registration of state emblems became less restrictive
As a general rule, the registration of state emblems are prohibited. As an exception, however, if authorized by the appropriate agency, trade marks consisting entirely of state emblems or signs indicating control or warranty may be registered. Another change is that the registration of signs indicating control, warranty or a hallmark is prohibited only with respect to certain goods.
4. Use of names of legal entities and organizations as a limitation to trade mark protection
As a result of the amendments, legal entities and other organizations could challenge trade mark holders regarding their lawfully used names in connection with their trade practices. Before the amendments this option was available only for natural persons.
5. Submissions and exhibits
In trade mark proceedings the party initiating the proceedings must file one copy of every submission for each opposing party as well as one copy for the office. In addition, one copy of each exhibit must be attached to every submission filed.
6. Protection of personal data
The Trade Mark Act now explicitly provides that the personal data submitted in trade mark proceedings may only be disclosed if the person concerned consents or if they are public under the general rules of public administration.
7. Withdrawal or modification of decisions
In the absence of opposing parties, the Hungarian Intellectual Property Office (HIPO) may withdraw or modify certain decisions ex officio (e.g., decisions staying a proceedings, decisions setting fines or procedural fees), if with respect to such decisions, a review petition has been filed and HIPO consents..
8. The conditions for expedited proceedings have been amended
Within one month from the filing of an application for expedited proceedings, not only the fee for the application for expedited proceedings must be paid but also the filing fee for the trade mark application.
9. Ancillary rules regarding collective marks
a. In the case of collective marks, it is a ground for exclusion if the sign is misleading, especially if it masks the collective nature of the mark.
b. In addition, the amendments clarify that the owner of a collective mark is the association but the mark may be also used by the individual members of the association.
c. In the future, the modification of policies regarding the use of collective marks must be approved by HIPO. The modifications become effective at the time of registration.
10. Use of certification marks
It was clarified that the holders of certification marks may not use such marks for the purpose of certification, but they may authorize such use.
11. Additional limitations of the registration of signs containing geographical indications
Signs consisting of or containing geographical indications may not be registered if they could not be registered as trade marks under EU law.
12. Electronic filing
As of January 1, 2014, the office accepts electronic international applications and requests in international trade mark filings.
Source: KNP LAW Nagy Koppany Varga and Partners, Hungary
Jun 14, 2013 (Newsletter Issue 9/13)
Filing Cases Online at Court
Dubai Courts have officially launched three innovative online services aimed at saving time and effort, and facilitating the work of litigants.
The services with the name ‘Al-Salfa’ are online registration of cases, access to the archive of case files and pro bono legal advice.
The testing of this service program began on February 1, 2013, and was made available to law firms on an optional basis. Owing to its successful testing, the program became mandatory from June 1st so that all cases presented to the Dubai Courts can be registered online from anywhere in the world.
The second service program allows plaintiffs to access file archives online and print information about their cases, judgments, decisions and other information, without the need to visit the courts to acquire the papers.
A pro bono legal advice program titled ‘Sure’ has further been launched, where volunteering lawyers can offer free legal consultations to litigants. This policy is aimed at boosting confidence in the judiciary and facilitating litigation for the public.
Source: Talal Abu-Ghazaleh Legal, Jordan
Jun 14, 2013 (Newsletter Issue 9/13)Harmonisation Project IntegratedThe Croatian State Intellectual Property Office (SIPO) has been integrated in the Common Harmonized Database by which its practice as the national trademark office of the Republic of Croatia has been harmonized with the practice of the OHIM and other offices participating in the project as regards to the classification of goods and services for the purposes of the registration of marks.
Furthermore, the Croatian version of the Common Harmonized Database on Classification of Goods and Services is now accessible to the users through the Euroclass application here
Source: www.dziv.hr and www.oami.europa.eu
Jun 04, 2013 (Newsletter Issue 8/13)
Apostille Convention in Force
The Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents, known as the Apostille Convention, has entered into force in Nicaragua on May 14, 2013.
The Apostille Convention is a method that simplifies the legalization of foreign documents in order to verify its authenticity, reducing time and costs.
With this addition, currently the Latin-American countries member of the Apostille Convention are: Argentina, Belize, Costa Rica, Colombia, Dominican Republic, Ecuador, El Salvador, Honduras, Mexico, Nicaragua, Panama, Peru, Trinidad and Tobago, Uruguay and Venezuela.
It is important to remember that the Apostille is valid only among countries that have signed the Convention.
Nicaragua will maintain the legalization process with those countries that are not part of the Apostille Convention yet.
Source: Moeller IP Advisors
Jun 04, 2013 (Newsletter Issue 8/13)
First Trademark Journal after Revolution Issued
The Libyan Trademark Office (LTMO) has issued the first Trademark Journal after the revolution and the resuming of its operations.
The Gazette is dated from May 20, 2013, however, it was distributed on 28 May 2013, and the opposition period ends on August 19, 2013.
Source: NJQ & Associates
Jun 04, 2013 (Newsletter Issue 8/13)
Amendments to the Trademark and Other Distinctive Signs Law
The amendments to the Law on Trademarks and Other Distinctive Signs which were published in the Official Journal No 81 entered into force on May 15, 2013.
Some of the most important provisions are related to geographical indications and designations of origin, and their registration procedure and regulation of use.
These amendments arise from the need to harmonize legislation with the compromises acquired by El Salvador by signing international treaties, especially the European Union Association Agreement, and also to ensure effective protection of these distinctive signs in order to promote the development of the local economy and export of goods.
Source: Moeller IP Advisors
May 17, 2013 (Newsletter Issue 7/13)Third Revision of PRC Trademark Law Chinese legislators are preparing for the third revision of the PRC Trademark Law. The current PRC Trademark Law was promulgated on 23 August 1992 and was revised in 1993 and 2001 respectively. However, the third revision aims to simplify the registration process, strengthen the protection of trademark rights and improve the enforcement against trademark infringement. The latest draft of the third revision of the PRC Trademark Law (“Draft Revision”) has been released by the Chinese legislators for public comments in January 2013.
The most notable amendments contained in the Draft Revision are below:
- Expansion of Non-traditional Trademark Registration
- Simplified Registration Requirements and Procedure
- Material Change in Opposition Procedure
- The Conflict of Trademark and Trade Name
- A More Trademark Owner Friendly Burden of Proof System
The Draft Revision will still be subject to two or three more readings before it is adopted by the Chinese legislators.
For more information, please check the article of King & Wood Mallesons here
Source: King & Wood Mallesons, China May 17, 2013 (Newsletter Issue 7/13)Trade Mark Practice Guidelines UpdatedThe Intellectual Property Office of New Zealand (IPONZ) has updated the Historic Trade Mark practice guidelines page to display any superseded practice guidelines from 3 May 2013 in PDF. The PDF will include any updates with changes tracked to make it easier to read about the updates. The Historic Trade Mark practice guidelines can be accessed here.
The current practice guidelines can be seen here.
Source: www.iponz.govt.nz
May 17, 2013 (Newsletter Issue 7/13)
Becomes Member to Implement Seniority Project
Malta has become the 14th EU National Office to implement the Seniority Project. The Maltese office joins Lithuania, Estonia, Latvia, Sweden, the Slovak Republic, Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal, the Czech Republic and Romania in implementation.
Having accurate seniority data is important for Community trade mark owners who have previously registered an identical mark in an EU member state which has been surrendered or allowed to lapse. The project, a part of OHIM´s Cooperation Fund, involves establishing links between entries in the national and Community databases and making the information accessible online.
Source: www.oami.europa.eu
May 02, 2013 (Newsletter Issue 6/13)Legal Protection of TMs in KurdistanThere are two options of obtaining legal protection through registration of trademarks in Kurdistan Iraq which are summarized as follows:
1. If the trademark is already registered in Iraq and the owner of the mark wishes to extend its protection to Kurdistan region an official letter should be issued by the Iraqi Trademarks Registrar in Baghdad and addressed to the Registrar of Trademarks in Kurdistan furnishing him with the complete details of the concerned trademark filed in Iraq with a report on its latest status as registered in order protect the mark and accredit its registration under Kurdistan jurisdiction.
2. For trademarks which are not originally registered in Iraq an application for registration of the mark should be submitted directly to the Trademarks registrar in Kurdistan with the following documents:
1. A power of attorney duly legalized up to an Iraqi consulate abroad as per enclosed format.
2. A certified copy of registration certificate of the trademark in the home country.
3. An extract from the commercial register or incorporation certificate of the trademark both legalized up to an Iraqi consulate abroad.
As alternative to document no. 2 in its absence, a certified copy of any document attesting that the applicant company is authorized to manufacture the goods intended to be included in the trademark application which needs to be also legalized up to an Iraqi conflate abroad.
The trademark application takes 6 – 8 months to be finally registered as from filing date to obtaining final registration certificate thereof.
Source: JAH & Co. IP, Doha, Qatar May 02, 2013 (Newsletter Issue 6/13)
Renewals Back to Normal
Renewal applications are no longer placed on hold at the Jordanian Trademark Office. All renewal requests for the month of February and March were kept on file in an attempt to clear the huge backlog of work at the Trademark Office. Now that operations are back to normal, applications for marks that fall due for renewal during the next two months will be renewed without any delay.
Source: Saba & Co. IP – Head Office, Lebanon
May 02, 2013 (Newsletter Issue 6/13)
Publication of Design Applications
The Kuwaiti Patent Office is now publishing industrial designs in the Official Gazette for the first time in the country.
Applications are examined in the country as to form, local novelty, and industrial applicability. Examination is generally a systematic process whereby the Patent Office is expected to notify the applicant of any objections. The applicant is then required to respond with arguments and/or amendments to overcome the objections. Amendments and arguments may then be accepted or rejected, triggering further response, until a design is issued or the application is rejected and/or abandoned. Even though design applications accepted by the Patent Office are published in the Official Gazette, oppositions can only be filed before the Court.
Source: Saba & Co. IP – Head Office, Lebanon
May 02, 2013 (Newsletter Issue 6/13)
New Feature in Trademark Renewal
The Swedish Patent and Registration office (PRV) has announced that it is now possible to pay for the online trademark renewal application through a deposit account.
Trademark owners can search for their trademark in the Swedish Trademark Renewal Service and find out when their trademark renewal is due. When using the online renewal service the fees are paid electronically.
Source: www.prv.se
May 02, 2013 (Newsletter Issue 6/13)
Cash Payments No Longer Allowed
The Finnish Trademark Office announced that their Client Service no longer accepts payments in cash starting from 1 May 2013. From now on, payments can be made by bank tranfers and credit cards.
Source: www.prh.fi
May 02, 2013 (Newsletter Issue 6/13)
Official Fees Increased
The Instituto Nacional de la Propiedad Industrial (INPI) has increased the fees for trademark filings in January, 2013. Currently, the new official trademark filing fees amount to USD 90 (approx.).
Publication fees are included in the filing fee as long as the trademarks are not bigger than 6 cm x 6 cm. If they are bigger than 6 cm x 6 cm up to a third part of the bulletin page, an additional payment must be done. This payment amounts to USD 20 (approx). If the trademark exceeds one third part of the page, the cost is USD 42 (approx).
Source: Rattagan Macchiavello Arocena & Peña Robirosa Abogados, Argentina
May 02, 2013 (Newsletter Issue 6/13)
Change of Practice in Registering Domain Names
The Board of Directors of the Albanian Authority on Electronic and Postal Communication (AKEP) amended the Regulation on Domain Names No. 437, of February 21, 2008 with its Decision No. 2252 of January 23, 2013.
The most important change is that foreign entities no longer need to have a local (Albanian) office or branch in order to register .al domain names. Foreign entities can now register .al domain names or have existing .al domain names transferred to them, pursuant to conditions prescribed by the Regulation on Domain Names. In the past, local presence was required.
Foreign entities may work through local registrars who are accredited by AKEP. The process of accreditation will commence on May 01, 2013.
Source: Cabinet Pavlovic, Belgium
May 02, 2013 (Newsletter Issue 6/13)Trademark Office Accepts TM Applications NowThe Libyan Trademark Office has started accepting new trademark applications. Please note that the first trademark applications has been already filed.
Source: JAH & Co. IP, Doha, Qatar Apr 15, 2013 (Newsletter Issue 5/13)
New TM Law in VG Expected
The publication of the Proclamation in the Government Gazette to implement the new Trade Marks Act, 2013 is expected. This will repeal the Trade Marks Act (Cap. 158) and the Registration of United Kingdom Trade Marks Act (Cap. 157).
Once the new Act is effective, the existing ‘dual’ registration system, which provides for the filing of either independent or UK-based applications, will be replaced by a single system for filing independent registrations.
In brief, the following changes are expected:
- Provision for the registration of service marks
- Provision for the registration of collective and certification marks
- Adoption of the Nice Classification (10th Edition)
- Revision of the renewal term from 14 to 10 years
Source: Spoor & Fisher, South Africa
Apr 15, 2013 (Newsletter Issue 5/13)Accession to Madrid ProtocolIndia has submitted the instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO on April 8, 2013. The treaty will enter into force with respect to India on July 8, 2013.
India is the 14th of the G-20 economies to accede to the Madrid Protocol. As of now there are 90 members of the international trademark system. Colombia, Mexico, New Zealand and Philippines are the other countries who have recently acceded to the Protocol System.
Administered by WIPO, an international registration under the Madrid System produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant. The trademark owner may thus protect a mark in all member countries (including the European Union with its Community Trade Mark (CTM)) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).
However before seeking international protection, the applicants are required to apply for trademark protection in a relevant national or regional trademark office.
Source: S. S. Rana & Co., India Apr 15, 2013 (Newsletter Issue 5/13)TM office rejects IRs designating IsraelEven though Israel joined the Madrid Protocol in 2010, the Trademark Office of Syria is rejecting International Trademarks designating Israel alleging reasons of ‘public interest’.
As a matter of policy, Israel will not reject an international application merely because it co-designates countries with whom it does not have relations.
The Israeli Trademark Office suggests that in practical terms, while it is possible to file a national application separately, a more cost-effective way is not to designate Israel initially, but to add Israel only after the registration in Syria has been obtained.
Source: JAH & Co. IP, Qatar and JMB Davis Ben-David, Israel Apr 15, 2013 (Newsletter Issue 5/13)Consultation for Fast Track Opposition ProcedureThe Intellectual Property Office (IPO) has today launched a public consultation on the introduction of
1) an opposition ‘fast track’ procedure within the Trade Mark Tribunal, and
2) a refundable appeal fee for inter partes appeals to the Appointed Person
The consultation seeks views on the appropriate procedural changes and closes on 17 May 2013.
Through the fast track procedure business can oppose the registration of new trade marks if the mark appears to be the same as, or too similar to their own existing mark.
The fast track seeks to improve access to opposition proceedings by reducing the cost, complexity and increasing the speed at which business can protect their trade mark rights.
For more information, please click here
Source: www.ipo.gov.uk
Apr 15, 2013 (Newsletter Issue 5/13)Revised TM Law Amends Opposition PeriodThe Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (Act) came into effect on 15 April 2013. It represents a significant revision of Australian trade marks law. In particular, the Act seeks to strengthen and streamline the trade mark enforcement system.
The most significant aspects of the trade mark law reforms brought in by the Act are:
- a revised process for the opposition of trade mark applications with a strong focus on recuding potential delays (the opposition period is reduced from 3 to 2 months after the publication for acceptance in the "Australian Official Journal of Trade Marks");
- the inclusion of a presumption of registrability for marks with respect to descriptiveness;
- a strengthened customs seizures regime; an increased variety of options for the enforcement of trade mark rights; and
- an extension of attorney-client privilege to fully embrace trade mark attorneys.
For more information, please check the article of K&L Gates here
Source: K&L Gates, Australia Apr 15, 2013 (Newsletter Issue 5/13)
Accession to Lisbon Act
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of Bosnia and Herzegovina, on March 22, 2013, of its instrument of accession to the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of April 14, 1891, as revised at Lisbon on October 31, 1958, and to the Additional Act of Stockholm of July 14, 1967.
The Lisbon Act and the Additional Act of Stockholm will enter into force, with respect to Bosnia and Herzegovina, on June 22, 2013.
Source: www.wipo.int
Apr 03, 2013 (Newsletter Issue 4/13)Timetable for TM Re-RegistrationThe Ethiopian Intellectual Property Office (EIPO) has issued a Directive confirming that all old-system cautionary notice 'registrations' filed before the effective date of the Proclamation (7 July 2006) are no longer effective but the owners of these 'registrations' will have a 'sunrise period' until 24 June 2014 within which to re-register their marks in terms of the new law.
In order to avoid congestion, the EIPO will be dealing with the old law 'registrations' in consecutive numerical order as indicated below:
0001-0400: March 25, 2013 – April 23, 2013
0401-0800: April 24, 2013 – May 23, 2013
0801-1200: May 24, 2013 – June 22, 2013
1201-1600: June 23, 2013 – July 22, 2013
1601-2000: July 23, 2013 – August 21, 2013
2001-2400: August 22, 2013 – September 20, 2013
2401-2800: September 21, 2013 – October 20, 2013
2801-3200: October 21, 2013 – November 19, 2013
3201-3600: November 20, 2013 – December 19, 2013
3601-4000: December 20, 2013 – January 18, 2014
4001-4400: January 19, 2014 – February 18, 2014
4401-4800: February 19, 2014 – March 20, 2014
4801-5200: March 21, 2014 – April 19, 2014
5201-5600: April 20, 2014 – May 19, 2014
5601-5900: May 20, 2014 – June 18, 2014
The requirements for re-registration of a trademark are as follows:
1. Power of attorney, legalized up to the Ethiopian Consulate.
2. Certified copy of corresponding home or foreign registration certificate with English translation, notarized. If unavailable, copy of certificate of incorporation, with English translation, certified.
Please note that the timetable is to assist the EIPO in dealing with a large backlog of work and while every effort should be made to comply with the timetable the EIPO will still accept all applications for re-registration properly filed by the deadline of 24 June 2014.
The EIPO has also confirmed that applications or registrations filed between 7 July 2006 and 24 December 2012 will be dealt with in terms of the new law, and do not need to be re-registered, although it will be necessary to apply for new certificates of registration upon payment of a fee by 24 June 2014.
Source: JAH & Co. IP, Doha, Qatar, Saba & Co. IP – Head Office, Lebanon
Apr 02, 2013 (Newsletter Issue 4/13)
PTO to Abolish ‘Class Heading Covers All’ Approach
As of March 1, 2013, the Bulgarian PTO has changed its approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations.
National trademarks are not registered under the “class heading covers all” approach but under the “means what it says” approach, meaning that the national trademark applicants listing class headings has to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class or only for the specific goods or services mentioned in the class heading.
The change follows the Court of Justice of the European Union’s June 19, 2012 decision in the IP Translator ‘class headings’ case (C-307/10 – Chartered Institute of Patent Attorneys v Registrar of Trade Marks), after which all national PTOs in the EU and OHIM agreed to unify the approach.
Currently 17 out of 26 PTOs in the EU use the “means what it says” approach, while the other nine PTOs, including the Bulgarian PTO, use the “class heading covers all” approach where the class heading provides protection for all goods or services included in the alphabetical list of the class.
The differences in the interpretive approaches have led to legal uncertainty and lack of predictability in cases of claiming priority and seniority and in revocation, cancellation, examination and opposition proceedings.
The Bulgarian PTO has introduced the following basic rules:
- If the applicant wishes the scope of trademark protection to cover all goods and services included in the alphabetical list of the particular class, the applicant must explicitly state on the application that “The application refers to all goods/services included in the alphabetical list of this class".
- If the applicant does not explicitly state that the scope of protection covers all goods and services in the alphabetical list of the particular class, the PTO will conclude that the applicant is seeking protection only for the goods or services mentioned in the class heading.
The change in the practice of the Bulgarian PTO does not affect trademark applications and registrations filed or processed prior to March 1, 2013.
Source: PETOŠEVIĆ
Apr 02, 2013 (Newsletter Issue 4/13)New IP Office PractiseThe IP Registry in Nigeria will no longer tolerate delays in responding to trade mark registration oppositions. According to the circular, the Registry will not grant an extension of time more than once and not for a longer period than 30 days.
Further, in respect of registered designs, the Registry now requires applicants to describe the novelty in their design applications. FORM 2 must forthwith contain the name(s) of the signatory who signs on behalf of the company or Agent submitting applications to the Registry.
For more information, please access the circular here
Source: Aluko & Oyebode, Nigeria Apr 02, 2013 (Newsletter Issue 4/13)Time Periods/Opposition Periods ChangedThe United Kingdom Intellectual Property Office (UKIPO) announced that the Trade Marks and Registered Designs (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment) Order 2013 came into force on 31 March 2013.
In terms of the amendment to the opposition period, this applies to any period that was still open on or after 31 March 2013. This means that for any UK trade mark application or UK designation of an IR that is published on 1 February 2013 or afterwards, the opposition period lasts for 2 months gross (ie: a trade mark application published on 1 February is be open to third party opposition until 1 April 2013 - instead of 31 March 2013 under the old regime).
For further information, please click here
Source: Squire Sanders (UK) LLP, UK Apr 02, 2013 (Newsletter Issue 4/13)Online Services EnhancedOn 2 April 2013, the IPO implements enhancements to its online trade mark services. This includes improvements to the online trade mark application, online trade mark renewals, e-correspondence, and the trade marks journal.
Full details can be viewed here
Source: Squire Sanders (UK) LLP, UK Apr 02, 2013 (Newsletter Issue 4/13)TM Law Reform/TM Amendment RegulationsThe Intellectual Property Office of New Zealand (IPONZ) announced that the amendments that are being made to the Trade Marks Regulations 2003 were notified in the New Zealand Gazette on 28 March 2013.
The Trade Marks Amendment Regulations 2013 come into force on 29 April 2013. These are the second part of the update to the Trade Mark Regulations 2003, following the implementation of the first part in December 2012.
The primary purposes of these Regulations are to update the Hearings procedures to improve the administration of proceedings before the Commissioner. Changes include:
- Allowing the Commissioner to grant an extension of time up to 3 months if the request is considered reasonable in the circumstances
- Introducing procedures relating to undertakings regarding confidential evidence
- Allowing the Commissioner to consolidate proceedings
- Amending regulation 75 allowing the Commissioner to grant an extension of time after the deadline has passed (request must still be filed prior to the deadline)
- Introducing procedures if a party repeatedly fails to - follow the directions of the Commissioner from a case management conference/ - provide documentation as directed by the Commissioner/ - agree to a Hearing date or attend a Hearing
In addition there are some other miscellaneous amendments to improve the operation of the regulations, including:
- Allowing an agent to remove themselves as agent from a trade mark
- Mandating that a class number must be provided when filing a Search and Preliminary Advice application
- Clarifying when a request for an extension of time in certain circumstances applies (continued processing)
For more information see the Trade Marks Amendment Regulations 2013 here
Source: www.iponz.govt.nz
Apr 02, 2013 (Newsletter Issue 4/13)Practice of Trademark OfficeThe Libyan Trademark Office will resume business as usual soon. In effect any deadlines or priority dates which fell within the Libyan revolution will be taken in consideration.
The Trademark Office will start receive the search application from April 1, 2013 and filing new Mark applications will take place starting May 2013.
The requirements for filing a trademark application in Libya are:
1. A Power of Attorney. The power of attorney should be signed and notarized by the trademark owner and legalized up to the Libyan Consulate in the owner home country.
2. An extract of the entry of the applicant company in the Commercial Register (Certificate Incorporation) legalized up to the Libyan Consulate.
3. The Name, address, nationality, and business of the applicant.
4. 10 prints of the trademark.
5. If priority is to be claimed, a certified copy of the priority document issued from a country member of the Paris Convention should be submitted upon filing with other required documents.
Please note that a legalized copy of the home registration certificate of the trademark is no more required which was a must requirement in the past.
Source: JAH & Co. IP, Doha, Qatar Apr 02, 2013 (Newsletter Issue 4/13)Trademark Office RelocatedThe Chinese Trademark Office moved to a new building. Its current address is:
State Administration for Industry and Commerce Trademark Office (CTMO)
1, Chama South Street
Xicheng District
100055 Beijing
China
Tel +86 10 68 02 78 20
Fax +86 10 68 01 36 23
www.ctmo.gov.cn
Please note that the new address has not been updated on the CTMOs website www.ctmo.gov.cn.
Source: CHOFN Intellectual Property, China Apr 02, 2013 (Newsletter Issue 4/13)
Additional Formalities to Trademark Applications Required
The Iranian Intellectual Property Office (IIPO) has recently updated its formalities for trademark applications in Iran.
IIPO will no longer accept general terms for products and services; trademark applicants will be asked to submit a serial number specifying each good or service according to the specifications found on the WIPO Nice Classification system found at http://www.wipo.int/classifications/nivilo/nice/index.htm.
IIPO also announced that a power of attorney, certified and legalized up to the Iranian consulate, a certified copy of the company extract, as well as pantone codes of the trademark colors in order to claim colors of the mark (documents which are required in support of trademark applications in the country) must all submitted within two months from the date of notification issued by the registrar, in addition to the serial number.
Source: Saba & Co., Lebanon
Apr 02, 2013 (Newsletter Issue 4/13)
10th Edition of Nice Classification
The UAE Trademark Office has recently shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012 and applies to new applications only.
Source: Saba & Co. IP – Head Office, Lebanon
Apr 02, 2013 (Newsletter Issue 4/13)New Trademark LawOn 24 December 2012, the Implementing Regulation to the 2006 Trademark Registration and Protection Proclamation in Ethiopia became effective. It brings into force a new, orthodox, trademark regime for the registration and enforcement of trade mark rights. The EIPO is expected to issue Directives shortly, which may clarify points that are currently outstanding.
Highlights of the Proclamation and Regulation:
- There is provision for the registration of service marks.
- Applications will be substantively examined.
- All old-system cautionary notice “registrations” (existing trademarks or “ETMs”) are no Longer effective. Trademark owners must file new applications to protect their rights under ETMs.
- For the time being, the filing requirements remain unchanged – new applications must be supported by a legalized power of attorney and a certified copy of a “home” or any other registration for the trademark. These documents must accompany the application.
- The official fees have increased
- Accepted applications will be published for opposition purposes. Until the official Journal appears, applications will be published in local newspapers.
- The opposition term is 60 days from the date of publication.
- The registration term is seven years from the date for application, renewable for further seven-year terms.
The effect of the new law:
1. Existing registered trademarks (ETMs) - All rights obtained using the former cautionary notice system are no longer effective. Trademark owners will need to file new applications to protect their trade marks.
2. Existing pending trademarks - Cautionary notice applications submitted to the EIPO but not yet registered (i.e. the Trademark Deposit Certificate has not yet been issued) will continue to be processed under the old regime. New applications will need to be filed if protection is still required.
3. Pending changes in ownership, renewal etc. - As the underlying right under ETMs will no longer be valid it is not advisable to pursue pending renewals, changes in ownership, and so on.
Source: JAH & Co. IP, Doha, Qatar Mar 12, 2013 (Newsletter Issue 3/13)Elimination of Deposit Account Replenishment by Credit CardThe Canadian Intellectual Property Office (CIPO) announced that CIPO has been looking for ways to reduce the merchant fees associated with the acceptance of credit cards. To help achieve this goal, CIPO will be eliminating the option to replenish a deposit account by credit card as of April 1, 2013.
After April 1, deposit account replenishment can be completed by using one of the following payment options: on-line banking, wire transfer, cheque, money order, debit card or cash (in person at Headquarters only).
Credit card payments will continue to be accepted for individual services when payment is made electronically, or when made in person, by facsimile or by mail using the CIPO Fee Payment Form.
For more information on payment options, please click here
Source: www.cipo.ic.gc.ca Mar 12, 2013 (Newsletter Issue 3/13)Official Fees IncreasedThe Registrar of Cyprus annouced that the official fees for patent and trademark work have been increased by an average of 18%. These new official fees are applicable for submissions to the Registrar as of February 4th, 2013.
The new official filing fee for one trade mark in one class is now EUR 50.00. The official filing fee for a certification mark is now EUR 80.00.
Source: Dr. K. Chrysostomides & Co LLC, Cyprus and Vayanos Kostopoulos, Greece Mar 12, 2013 (Newsletter Issue 3/13)
E-Filing Introduced
The Yemeni Ministry of Industry and Trade (YMIT) has recently launched a new system to file trademark applications electronically on the following website: www.yipo.gov.ye
This new system allows applicants to settle the official fees at the Patent & Trademark Office (PTO) and then fill out an electronic application form along with the requirements, check and review it for accuracy and precision, and then submit it directly over the internet to the Intellectual Property Office. Original copies of the required documents should still be filed at the PTO. The sole purpose of this system is to save the PTO's time regarding entering the data and the required documents to their system. It is cost efficient, and in turn will shorten the examination procedure along with its publication notices.
The YMIT’s goal is to fasten all its services by developing an electronic system for all procedures, which will facilitate the process for clients primarily and will ensure better quality service.
Source: www.sabaip.com
Mar 12, 2013 (Newsletter Issue 3/13)
Renewal Stopped for a Month
Effective February 20, 2013, renewal of trademarks is stopped for one month, according to a new regulation drafted by the Intellectual Property Follow-up Department part of the Jordanian Trademark Office.
This new regulation was implemented in order for related parties to work on accumulated applications. This temporary process applies only to new applications. Applications due for renewal within the month will be renewed on their due date.
Source: www.sabaip.com
Mar 12, 2013 (Newsletter Issue 3/13)
Amendments to Trademark Law in Force
In accordance with the Law “On introduction of changes and amendments to some laws of the Republic of Belarus in matters of legal protection of intellectual property ”, the latest amendments to the Belarus Law “On Trademarks and Service Marks” came into force on January 15, 2013.
There are two main issues:
First, the national regime of exhaustion of trademark rights has been substituted with a regional regime. This amendment has been introduced in pursuance of Article 13 of the Agreement on Unified Principles of Regulation in the Sphere of IP Rights Protection, signed by Belarus, one of the current three member states of the Customs Union of Belarus, Russia and Kazakhstan. According to the amended Article 20.5 of the Belarus trademark law, the use of a trademark with respect to goods placed on the market in the territory of the member states, signatories of the agreement, by the trademark owner or with his consent, is not considered an infringement of the exclusive trademark owner’s rights. In other words, as of January 15, 2013, trademarks owners are not able to stop the import of goods into Belarus from Russia and Kazakhstan and/or prevent any other use of their trademarks in Belarus with respect to the goods which have been placed on the market in Belarus, Russia or Kazakhstan by the trademark owner or with his consent.
Another important amendment that has been introduced to the Belarus trademark law is Article 24, according to which trademark license agreements, trademark assignment agreements or trademark pledge agreements with respect to trademark rights valid on the territory of Belarus are considered null and void unless registered with the Belarus PTO. Before this amendment came into force, the registration of trademark-related agreements in Belarus was not obligatory.
Source: PETOŠEVIĆ
Mar 12, 2013 (Newsletter Issue 3/13)EU Trademark and Design RegulationsAs a result of Croatia’s approaching accession to the European Union on July 1, 2013, EU’s trademark and design regulations will enter into force in Croatia and all registered EU trademarks and designs will automatically extend to the new EU member state.
According to the notification recently issued by the Office for Harmonization in the Internal Market (OHIM), Community Trademark (CTM) applications filed from January 1, 2013 to June 30, 2013, or during six months prior to Croatia’s date of accession, may be opposed by a Croatian trademark owner, if the filing or priority date of the Croatian trademark is earlier than the filing or priority date of the opposed CTM application and if the national mark was applied for in good faith.
In June 2010, the OHIM started the internal preparations, which include translation of official documents and databases into Croatian and recruitment of staff from the new EU state. After Croatia joins the EU, it will be possible to submit trademark and design applications in Croatian.
The effects of the enlargement in terms of the proceedings before OHIM are thoroughly covered in OHIM’s manual.
Source: PETOŠEVIĆ Mar 12, 2013 (Newsletter Issue 3/13)
Trademark Law Amended
The amendments to the Serbian trademark law were published in the Official Gazette No. 10/2013 on January 30, 2013 and came into force on February 7, 2013.
The most significant novelty is that parallel import is no longer allowed in Serbia. Namely, the previous law prescribed that trademark holders cannot oppose the use of their trademarks in connection with goods marked with such trademarks and placed into commerce anywhere in the world by the trademark holder or other person authorized by the holder. Under the amended law, the previous system of international exhaustion of rights has been substituted with a system of national exhaustion of rights, whereas now the holders cannot oppose the use of their marks with respect to goods bearing such marks and placed on the Serbian market by the holder or other person authorized by the holder. In addition, trademark holders cannot oppose the goods in transit.
Most amendments primarily aim to eliminate certain terminology shortcomings and thus ensure more accurate interpretation and effective implementation of the Law on Trademarks.
In addition, the amendments aim to harmonize Serbian regulations with the corresponding EU legislation, namely the European Directive 2004/48/EC of the Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks.
The newly amended Article 4 further refines the definition of a trademark in a way that it specifically includes two conditions that must be fulfilled simultaneously. Namely, the sign must be capable of being represented graphically and of distinguishing the goods or services in trade; therefore Article 4 has been completely harmonized with the Article 2 of the Directive 2008/95/EC.
The compliance with the above article has also been included as an additional ground for refusal within Article 5 of the trademark law.
The wording of the provisions prescribing which marks are excluded from protection has been changed to correspond to the provisions of the Directive 2008/95/EC.
According to the amended law, foreign residents no longer have to be represented before the PTO by attorneys at law or patent and trademark representatives. This obligation still stands for the non-resident foreign individuals and entities.
The previous law explicitly prescribed that an exclusive licensee is entitled to sue for the infringement. Now, this right has been granted to all licensees (exclusive and non-exclusive), unless otherwise prescribed by the license agreement.
Lastly, the right of information has been explicitly extended to the persons other than infringers in accordance to the corresponding provisions of the Directive 2004/48/EC.
Source: PETOŠEVIĆ
Mar 12, 2013 (Newsletter Issue 3/13)
Trademark Law Amended
After Lithuania’s parliament ratified the Singapore Treaty on the Law of Trademarks on November 8, 2012, it also adopted the amendments to Lithuania’s Law on Trademarks, which will enter into force on June 1, 2013.
The trademark law amendments and the related amendments to the Law on Fees for the Registration of Industrial Property Objects, which will also enter into force on June 1, 2013, are intended to simplify the procedures and reduce registration fees by approximately 25 percent.
Some of the most important changes to the trademark law are described below.
While currently only well-known trademarks and CTMs with reputation enjoy protection against marks covering dissimilar goods or services, the amended law will extend the protection to international registrations designating Lithuania and national trademarks with a reputation in Lithuania.
To simplify the application procedure, the amended trademark law will allow payment of application fees within a month after the filing. Only details of payment will need to be indicated without providing paper copy of the bank transfer.
In case a mark is contested, the amended trademark law will allow a division of the trademark application or registration into several applications or registrations with the obligation to pay application and/or registration fees for each separate application or registration.
Another novelty is that the assignment of trademark rights will not be permitted if:
- The trademark would become misleading as a consequence of the assignment; or
- If the assignee does not submit proof of permission to use the trademark where such permission is required (use of national symbols for example).
Another important change is that licenses will have effect against third parties even if they are not recorded in the Lithuanian trademark register. In addition, it will no longer be necessary to submit a notarized copy of the license agreement for the recordal of a license. A copy of the license agreement will be sufficient for recordal purposes.
Also included are important amendments pertaining to acquiescence. The amended law is clearer in regard to invalidation actions and avoids difficulties with interpretation of “obviously tolerating the use of a later mark for more than five years” as defined in the current version of the law. The amended law more clearly defines that the trademark may not be invalidated “if the owner of the earlier mark has known and has not opposed the use of a later mark” within five years after its registration.
The provisions on the non-use cancellation actions have also been changed. The amended law no longer includes the provision stating that a trademark will be cancelled if it has not been put to use or if there have not been “serious preparations to start use” for five years since the registration. The amended law simplifies the non-use cancellation grounds, i.e. it simply states that the mark must be brought into genuine use within five years of the registration date.
Source: PETOŠEVIĆ
Mar 12, 2013 (Newsletter Issue 3/13)New Trademark Filing SystemThe Ministry of Economics and Trade, the General Directorate of Economic and Trades, and the Intellectual Property Protection department - Trademarks Division, in attempt to develop the trademarks registration procedure, has adopted a new online filing system as of February 2013.
Accordingly, no more hard copies are required to be submitted in order to obtain a filing date and a filing number; however, the new system has added new requirements, which are identified below:
- Applicant details must be entered in Arabic characters and English characters;
- Applications should include Arabic transliteration of the trademark;
- Trademark name and design must be supplied as PDF file even if it is a word mark, and
- Full name and capacity of the signatory on the power of attorney (PoA) must be clearly indicated on the application.
The new system, which is available twenty four hours through the whole week allows for the Lebanese citizens, companies and local agents to file their trademark applications and check their status online, while the original documents should be filed at a later stage.
Source: NJQ & Associates and JAH & Co. IP, Doha, Qatar Mar 12, 2013 (Newsletter Issue 3/13)
New Automatic Search System Implemented by TM Office
The Trademark Office of the United Arab Emirates announced that it has started implementing a new automation search system which will only reveal the identical marks and not the confusingly similar marks.
Source: www.ag-ip-news.com
Feb 18, 2013 (Newsletter Issue 2/13)Changes to Trademark Services Soon ActiveThe United Kingdom Intellectual Property Office (UKIPO) announced that their new IT system for processing trademarks is going to be implemented in February 2013. The new system will increase the processing efficiencies and introduce some customer enhancements. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.
For further information and full details, please click here
Source: www.ipo.gov.uk Feb 18, 2013 (Newsletter Issue 2/13)
Singapore Treaty Ratified
On the 8th of November 2012 the Parliament of the Republic of Lithuania enacted the Law on the Ratification of the Singapore Treaty on the Law of Trademarks. On the same day in accordance with implementation of the Treaty the Draft Amendments to the Law on Trademarks of the Republic of Lithuania were approved.
The Law on Ratification of the Singapore Treaty on the Law of Trademarks will enter into force on the 1st of April 2013. According to the Article 28 paragraph 3 of Singapore Treaty on the Law of Trademarks, Lithuania will become bound by this Treaty three months after the date on which it has deposited its ratification instrument. The purpose of the International Treaty is to unify procedural regulations for the trademark registration in contracting states.
Source: www.vpb.gov.lt
Feb 18, 2013 (Newsletter Issue 2/13)
New Payment Regime for Foreigners
The Iranian Trade Marks Office has changed the official fees payment regime in January 2013.
As per the new payment regime, the Iranian Trade Marks Office only accepts payment of official fees for foreign applicants in Euros or Swiss Francs.
In fact, there have been no structural fee changes, but applicants are required to pay the official fees based on the currency exchange rates on the payment day. As the Euro/Franc currency exchange rate is not fixed, the official fees will vary from time to time. The restrictions of international money transactions on Iranian banks have made the payment issue more difficult.
The implementation of the new payment regime will also be imposed on the registration fees for pending applications.
The official fees for Iranian applicants are still payable in local currency, Rials.
Source: Raysan Patent & Trademark Agents, Iran
Feb 18, 2013 (Newsletter Issue 2/13)
Official Fees Increased
The official fees have been increased by 5% effective as from January 1, 2013.
The official trademark application fee for registration is MUR 3,150 for one mark in any two classes. Each additional class is MUR 1,575.
Source: De Comarmond & Koenig (International), Mauritius
Feb 18, 2013 (Newsletter Issue 2/13)
Protection for Person's Personality in Guernsey
On 3 December 2012 new legislation came into force in Guernsey allowing the protection of ‘personality’ and ‘image’ rights as new forms of intellectual property.
Any natural persons (alive or dead within the last 100 years), legal persons, joint or group personalities and even fictional characters can have their ‘personality’ registered and any photos, moving images, names, signatures, appearances, expressions, voices, likenesses, gestures or mannerisms can also qualify for protection via association or registration as ‘images’.
Source: www.ipo.guernseyregistry.com and Schillings, Uk
Feb 18, 2013 (Newsletter Issue 2/13)Official Fees ReducedThe Colombian Trademark Office has reduced its trademark fees effective January 2013.
The office has granted a 50% discount to all those small and medium-sized Enterprise and to the public and private universities which are recognized and approved by our Ministry of Education. A smaller discount was also included for the filing of multiclass trademark application for each addition class, and for trademark renewals.
The new official fees for filing a trademark in Colombia is 750.000 COP in one class, and 375,000 COP in each additional class.
Source: Triana, Uribe & Michelsen, Colombia Feb 18, 2013 (Newsletter Issue 2/13)Issuances of Registration CertificatesThe Libyan Trademarks Office has started to issuance Registration Certificates for trademark applications which were filed in the years 2002 and 2003.
Clients who have any application filed in these years are urged to liaise with their local agents to contact the registrar to check status of their files in order to complete any missing and be sure that the certificate is timely issued.
Source: JAH & Co. IP, Doha, Qatar Feb 18, 2013 (Newsletter Issue 2/13)Official Fees IncreasedThe Ministers Cabinet in West Bank of Palestinian National Authority has issued new Regulations amending the Trademarks Law No. 1 of the year 1952 (Jordanian law which applied in West Bank) and to be read along with the same, whereby Article 3 of the aforementioned Regulations has been amended, on 28 August 2012.
The new Regulations stipulated an increase in the official fees stated in Article 3 of the Trademarks Regulations No. 1 of the year 1952, and which should be paid to the West Bank Trademarks Office for filing, publication, registration, renewal, recordals, oppositions and cancellation services.
The new official fees list for trademarks services adopted by the West Bank Government on September 3, 2012 became effective as of January 20, 2013.
The official fee for filing a trademark is now USD 115.00 for each class. The official fee for registration is USD 70.00 and for publication USD 30.00.
Source: JAH & Co. IP, Doha, Qatar and A. F. & R. Shehadeh Law Firm, Palestinian Territory Feb 18, 2013 (Newsletter Issue 2/13)
Online Banking Available
The Canadian Intellectual Property Office (CIPO) announced that CIPO's deposit account holders will be able to replenish their account via the online banking system of all major Canadian banks in February 2013.
This modern, convenient and flexible option will offer CIPO clients numerous benefits, including: system validation of the client number to reduce the chance of possible errors, minimal user fees per transaction, secure transmission, and storage of deposit account replenishment information. Detailed instructions will be provided once the online banking service is available
Use of online banking will be limited to clients who are currently registered to use CIPO's online electronic statements service to view their credit card and deposit account transactions. Clients who are not currently registered should contact CIPO's Finance Branch in writing for instructions on how to access their online electronic statements.
Source: www.cipo.ic.gc.ca
Jan 18, 2013 (Newsletter Issue 1/13)Accession to Nice AgreementThe Tenth Edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (Nice Classification) has been officially adopted in the Kingdom of Saudi Arabia, according to the Trademark Office at the Ministry of Commerce and Trade.
The Trademark Office is now ready to receive trademark applications for goods and services under the same edition of the classification.
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. The system groups products into 45 classes and allows users seeking to trademark a good or service to choose from these classes as appropriate.
Source: JAH & Co. IP, Doha, Qatar Jan 18, 2013 (Newsletter Issue 1/13)New Formalities PracticeThe Swedish Patent and Registration office (PRV) has started to apply a new practice concerning the examination of formalities in matters related to trademark- and industrial design cases as of October 1, 2012. In most cases signatures in original hand-writing will no longer be required. Furthermore, authorization of signatures will only be examined in doubt of their veracity. PRV will normally accept replies to office actions filed by electronic means and should be sent to kundtjanst@prv.se.
There will be a change in the demand of original signature concerning trademark- and design cases. Certified copies will be accepted but there is no demand for seals, stamps or certification by a Notary Public. A confirmation in hand writing is sufficient, together with the name in printed or block letters. Furthermore fax and e-mail of scanned documents containing a signature in original will normally be treated as certified copies.
The new practice pertains to applications, withdrawals, letters of consent, legal documents/deeds filed in support of applications for the recordal of transfers, licenses, pledges. Appeals will also be accepted for the purpose of a filing date, however, a signature in original hand-writing will be subsequently be required by PBR (the Count of Patent Appeals) before final trial of the appeal.
The requirement for submission of a document in original will remain concerning powers of attorney.
For further information, please click here
Source: www.prv.se Jan 18, 2013 (Newsletter Issue 1/13)
Official Fees Increased
The Swedish Patent and Registration office (PRV) has increased the official fees for trademark filings from December 1, 2012.
The official fee for registering a trademark is now SEK 2,300.00 (approx. EUR 267.-) in paper form or SEK 1,800.00 (approx. EUR 209.00) for e-filing in one class.
The official fee for each additional class is now SEK 900.00 (approx. EUR 104.00) for E-filing. The fee for each additional class stays the same in paper form with SEK 900.00.
Source: www.prv.se
Jan 18, 2013 (Newsletter Issue 1/13)7th Edition of Vienna Classifications UpdatedAs of the 1st January 2013, IPONZ has changed from using the 6th edition to the 7th edition of the Vienna classification system. The 7th edition of the Vienna classification system makes useful additions and amendments to the Vienna codes currently being used by IPONZ.
A summary of addition is available on the IPONZ website here
The 7th edition of the Vienna classification system is available on the WIPO website here
Source: www.iponz.govt.nz Jan 18, 2013 (Newsletter Issue 1/13)
Accession to Singapore Treaty
On November 27, 2012, the Belarus parliament approved the draft law “On accession of the Republic of Belarus to the Singapore Treaty on the Law of Trademarks”.
The Singapore Treaty will enter into force after Belarus deposits its instrument of ratification with the World Intellectual Property Organization (WIPO) Director General.
The Singapore Treaty, adopted in Singapore on March 27, 2006, establishes common, international standards for trademark registration procedures.
Source: PETOŠEVIĆ
Jan 18, 2013 (Newsletter Issue 1/13)Official Fees IncreasedThe Spanish Patent and Trademark Office (SPTO) has announced that the official fees for filing a trademark has been increased for 2013.
The official fee for a trade mark application if filed in paper is now EUR 141.73 for a single class and EUR 91.81 for each additional class; if e-filing is used the official fees are EUR 120.47 for a single class and EUR 78.04 for each additional class.
Source: Zivko Mijatovic & Partners, Spain Jan 18, 2013 (Newsletter Issue 1/13)New Power of Attorney RegulationsThe Trademarks Registrar of Iraq has issued a regulation with respect to belated powers of attorney (PoA) on 17 November 2012.
The power of attorney must be submitted within 6 months from the date of filing the trademark application, otherwise the application will be considered to have gone abandoned.
The power of attorney must be legalized by the Iraqi Consulate abroad and then locally legalized from the following authorities in order to be acceptable by the Iraqi registrar:
1. General Commission for Taxes at Ministry of Justice
2. Legalization Directorate at the Ministry of Foreign Affairs
3. Central Bank
Source: JAH & Co. IP, Doha, Qatar Jan 18, 2013 (Newsletter Issue 1/13)
10th Edition of Nice Classification
As from January 1, 2013, the TM Office adopted the 10th Edition of the Nice Classification to distinguish goods and services for the registration of trademarks
Resolution Nr. P-297, taken by the President of the argentinean PTO, was published in the Official Bulletin last December 28th 2012.
It is to be noted, that this adoption includes Version 2013 of the 10th Edition, with titles and explanatory notes according to this latest version.
Other Latin-American countries who adopted the 10th Edition are Brazil, Chile, Colombia, Ecuador, El Salvador, Guatemala, Mexico, Panama, Paraguay, Peru and Uruguay.
Source: Moeller IP Advisors, Argentina
Jan 18, 2013 (Newsletter Issue 1/13)
Accession to the Hague Apostille
The Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents, known as the Apostille Convention, has entered into force on October 14, 2012 in Uruguay.
Uruguay deposited its instrument of accession to the Hague Convention in February, and thus became the 103rd Contracting State.
With this addition, currently the Latin-American countries members of the Apostille Treaty are: Argentina, Belize, Costa Rica, Colombia, Dominican Republic, Ecuador, El Salvador, Honduras, Mexico, Panama, Peru, Trinidad and Tobago, Uruguay and Venezuela.
The Apostille Convention is a method that simplifies the legalization of foreign documents in order to verify its authenticity, reducing time and costs.
Section 1 of the Apostille Treaty establishes that the Convention applies to the following public documents: court documents, administrative documents, documents issued by a notary and official certifications in documents signed by private persons.
Source: Moeller IP Advisors, Argentina
Jan 18, 2013 (Newsletter Issue 1/13)Official Fees IncreasedThe Turkish Patent Institute (PTO) has increased its official fees.
The official fee for a trademark application is now TRY 150.00 (approx. EUR 64.00) for a single class and TRY 150.00 for each additional class. The official fee for issuing the certificate of registration is now TRY 450.00 (approx. EUR 191.00).
Source: Moroglu Arseven Law Firm, Turkey and AZe Marka Patent Ltd., Turkey Jan 18, 2013 (Newsletter Issue 1/13)New Legislation DraftedThe Government of The Bahamas announced on 8 January 2013 that it intends to modernize the country’s intellectual property system and has drafted new legislation. The Bills can be viewed on the Government website www.bahamas.gov.bs under the heading of Bills, Laws & Acts and includes:
- Copyright Bill
- Patent Bill
- Trade Marks Bill
- Geographical Indications Bill
- False Trade Descriptions Bill
- Protection of New Plant Varieties Bill
- Integrated Circuits Bill
The intention is to make The Bahamas compliant with its intellectual property rights obligations under the WTO and EPA. The Ministry of Financial Services and the Attorney General’s Office have recently started discussing the implications of the draft legislation through public forums and are requesting comments from professional associations and legal practitioners.
Source: Mosko & Associates, Bahamas Dec 04, 2012 (Newsletter Issue 18/12)Notification on Disposal of Opposition/RectificationThe Office of Controller General of Patents, Designs and Trademarks (CGPDTM) has recently issued a notification directing the trademark office to initiate a special drive for disposal of those opposition/rectification matters where the opponents/applicants have withdrawn their oppositions/applications respectively either 'suo-moto' or on the basis of settlement between parties to the proceedings. This would also include cases where application seeking rectification of the Register of trademarks by cancellation or variation of registered trademarks were filed but were later withdrawn.
The applicants, opponents and agents are also directed to communicate information about their request along with details about the case numbers, date of request, etc. to the concerned TMR branch offices latest by November 30, 2012.
The Section in charge of the Tribunal Section of the all offices of the Trade Marks Registry shall then segregate the opposition and rectification matters and thereafter put up relevant files/records of the cases to the designated officers on the dates scheduled for their disposal.
The cases will be taken up for disposal as follows:
Date Matters
17.12.2012 Opposition matters relating to applications bearing No. 0000001 to
0500000
18.12.2012 Opposition matters relating to applications bearing No. 0500001 to
0900000
19.12.2012 Opposition matters relating to applications bearing No. 0900001 to
1200000
20.12.2012 Opposition matters relating to applications bearing No. 1200001 to
1600000
21.12.2012 All the rectification matters
During the period of disposal of cases all the Deputy Registrar, Assistant Registrar and
Senior Examiners of Trade Marks of the concerned office are also directed to exclusively take up and dispose the cases on the basis of letter or willingness of withdrawal of the trademark application/ opposition as the case may be, and the comments of the opposite party on the said withdrawal. The hearing officer will issue a final order in the opposition/rectification matter in case of genuine withdrawal by competent or authorized person and consent of such person on behalf of the opposite party to the proceedings.
The concerned parties or their duly authorized agents are therefore requested to appear before the nominated officer of the appropriate office at a scheduled date as no separate hearing notice will be issued in such cases. They are further directed to bring the authentic copies of the following documents at the time of their appearance at the Trade Marks Registry:
- Withdrawal letter
- Letter from the other party consenting to withdrawal
- Latest PA/GPA
- Settlement deed
- Request for amendment along with the fee receipt
The notification can be accessed from the Trade Mark Registry’s office here
Source: S. S. Rana & Co., India Dec 04, 2012 (Newsletter Issue 18/12)
PTO Announced Reforms
The Turkish Patent Institute (PTO) announced that they undertake significant reforms.
The overall process for trademarks, patents and industrial designs will be shortened, and the certificates of registration for trademarks will be issued online. Notifications to be issued by the Patent Institute will be sent online, and all petitions of opposition, response and appeal will be also filed online.
The process of trademark registration will be shortened to be seven months instead of 12 months.
In addition, the Registry is planning to publish trademark applications on a daily basis as applied by the Office for Harmonization in the Internal Market (OHIM) rather than publishing monthly trademark bulletins.
Source: www.tpe.gov.tr and AGIP, Turkey
Dec 04, 2012 (Newsletter Issue 18/12)Trademark Electronic Application System LaunchedThe Iranian Trade Marks Registry launched a system for electronic trade mark application system on November 18, 2012. This development follows successful inauguration of electronic application for patents and industrial designs a few months ago.
Currently, the Trade Marks, Patents and Industrial Design Registries only accepts electronic filing of applications. There have been no changes in filing procedures or formalities requirement, but a new application number format will be assigned automatically by the electronic application system. The original supporting documents (i.e. power of attorney, applicant’s incorporation document) are still required to be submitted to the Office in hard copy.
The electronic platform for filing of trade mark applications and workflow system is available at http://iripo.ssaa.ir. The platform is only designed in Persian and no English version is available yet.
The system provides for examination, correspondence, publication and registration procedures electronically. However, the opposition, hearing, renewal, assignment and license recordation procedures are handled as before.
The electronic platforms for filing of patent and industrial design applications and workflow system are available only in Persian at the same address at http://iripo.ssaa.ir.
The Iranian Industrial Property Office is gradually shifting to a completely paperless office in a phased manner during the next years.
Source: Raysan Patent & Trademark Agents, UK
Dec 04, 2012 (Newsletter Issue 18/12)
Accession to Nice Agreement
On November 16, 2012, Montenegro deposited its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised in Stockholm on July 14, 1967, and in Geneva on May 13, 1977, and amended on September 28, 1979.
The Geneva Act of the Nice Agreement as amended will enter into force in Montenegro on February 16, 2013.
Source: PETOSEVIC Montenegro and www.wipo.int
Dec 04, 2012 (Newsletter Issue 18/12)Amendments to Trademark Law The Ministerial Decision No. 1147 dated October 16, 2012 of the Saudi Ministry of Commerce and Industry became effective as of the date of its publication.
The main amendments are listed as follows:
- Renewal applications are only examined to ensure a legalized power of attorney in the name of the agent renewing the mark and the original registration certificate of the mark are enclosed with the renewal application.
- The Trademark Office will publish a notification that indicates the trademark’s assignment and includes: trademark’s description; number and date of trademark registration; name of previous trademark owner; name of new trademark owner, his nationality and address
- The Trademark Office will publish notices on trademarks cancelled on the website of the Ministry of Commerce and Industry. Before such publication was made in the Official Gazette "Umm Al Qura".
Source: JAH & Co. IP, Doha, Qatar Dec 04, 2012 (Newsletter Issue 18/12)
Expiration of Time Limits during Festive Season
The German Patent and Trademark Office (DPMA) has informed that Christmas Eve and New Year's Eve are not counted as official holidays but rate as working days. Therefore, the deadline in which the last day of the period falls on Christmas Eve and New Year's Eve will not be postponed on the next working day (see also Notice No. 8/1999). Only when Christmas Eve and New Year's Eve fall on a Saturday or Sunday, the deadline will be postponed to the next business day (see § 193 BGB).
Although the DPMA will be closed on December 24, 2012 and January 1, 2013 you can submit applications, oppositions, appeals and other business related matters on time by using the night mailboxes of our departments in Munich, Jena and Berlin or sending a fax to +49 (0)89 2195 2221.
Source: www.dpma.de
Dec 04, 2012 (Newsletter Issue 18/12)Official Fees Soon IncreasedNew Zealand will increase the official fees for filing a trademark to NZ$150 per class on December 10, 2012.
Source: A J Park, New Zealand Nov 19, 2012 (Newsletter Issue 17/12)Accession to Singapore Treaty and Amendments to Trade Mark LawOn the 8th of November 2012 the Parliament of the Republic of Lithuania enacted the Law on the Ratification of the Singapore Treaty on the Law of Trademarks. On the same day in accordance with implementation of the Treaty the Draft Amendments to the Law on Trademarks of the Republic of Lithuania were approved. The latter will simplify the procedures and reduce the fees for registration of industrial property objects.
When the amendments enter into force the recordal of a license agreement no longer be compulsory in oder to become valid against third parties. That is to say, it will be possible to verify the status of the licensee not only according to the information in the public register, but also to any other obtainable evidences.
The amendments to the laws also will simplify the procedure of recording when registering the rights to the trade mark or to the design license or assignment agreements. a notarized extract from a licensing contract will no longer be obligatory for recording data in the register. The document certifying the conclusion of the licensing contract signed by one of the parties whall be enough.
The Law on the Trademarks also embarks the regulation of division of application or registration of trademarks, protection for national trademarks that gained reputation in the territory of Republic of Lithuania.
The Fee for the trademark application, design application or topography application will be payable within 1 month after filling date.
Additionally, The Law on Fees for the Registration of Industrial Property Objects will reduce the fees by 25 percent and more on patent application, design application, topography of semiconductor product application, grant of patent, design registration, publication and issuance of registration certificate, renewal of design, registration of trademark, patent, and design license agreements, also the changes will allow to confirm the payment by electronic means.
Legislation Amendments will enter into force on the 1st of June 2013.
Source: www.vpb.lt and METIDA Law firm, Lithuania
Nov 19, 2012 (Newsletter Issue 17/12)Amended Trade Mark Regulations PublishedThe amendments that are being made to the Trade Mark Regulations have been notified in the New Zealand Gazette on 8 November 2012.
The Trade Marks Amendment Regulations 2012 and the Trade Marks (International Registration) Regulations 2012 will bring a number of changes to the trade mark system into force on 10 December 2012.
These changes represent the first set of changes that will be made to the regulations and cover the following areas:
- Regulations to give effect to the Madrid Protocol
- Regulation amendments required to comply with the Singapore Treaty
- Amendments to enable New Zealand to accede to the Nice Agreement
- Fees
- Mandatory electronic communications through the Commissioner’s case management facility
- Miscellaneous amendments to improve the operation of the regulations
The second set of changes are anticipated to come into force in the first quarter of 2013 and will cover:
- Amendments to proceedings regulations to improve the administration of proceedings before the Commissioner
- Further miscellaneous amendments to improve the operation of the regulations
The reason for the regulations being done in two parts is to allow New Zealand to implement the international treaties elements, including the Madrid Protocol in 2012.
For more information please check the the following publications:
- Trade Marks (International Registration) Regulations 2012 here
- Trade Marks Amendment Regulations 2012 here
- Main changes from the trade mark law reform 2012 here
Source: www.iponz.govt.nz Nov 19, 2012 (Newsletter Issue 17/12)
Publication in Official Gazette No Longer Requested
The publication in the Official Gazette (Um Al Qura) is no longer requested in Saudi Arabia.
By pursuant of the Ministerial Decree No. 1147 dated 16 October 2012 the Ministry of Commerce and Industry (MOCI) provides for publication of different request and applications concerning trademark in the Ministry of Commerce website instead of the Official Gazette "Umm Al Qura".
The Decree amended several Articles in the Implementing Regulations of Trademark Law including the provisions organize publication of accepted applications, renewal applications; assignment applications; license applications, cancellation requests of mortgage and license and Administrative and Court cancellation decisions of trademark registrations.
The decision allows publication of the above requests in the website of ministry of commerce and industry (MOCI) or any other place determined by MOCI.
The decision became effective upon on its publication in the Official Gazette.
Source: SMAS IP, Saudi Arabia
Nov 19, 2012 (Newsletter Issue 17/12)
New Trade Mark Law in Montserrat
The implementing Regulations for the Trademarks Act (Cap15:23) 2002 came into effect in Montserrat on 1 November 2012.
Under the new Act, the ‘dual’ registration system which provides for the filing of either independent or UK-based applications remains in place. The changes primarily affect independent applications (bringing them into line with UK-based applications). Some of the changes are:
- Provision for the registration of service marks
- Provision for the registration of collective, certification and series marks
- Adoption of the Nice Classification (10th Edition) (replacing the old British Classification of 50 classes)
- Provision for the recordal of licences
- Revision of the renewal term from 14 to 10 years
- General increase in the official fees
Source: Spoor & Fisher, South Africa/Channel Islands
Nov 19, 2012 (Newsletter Issue 17/12)Change of Address of Patent OfficeThe French National Office INPI has moved to new premises:
Institut National de la Propriété Industrielle
15, rue des Minimes
92400 Courbevoie
France
Tel +33 1 71 08 71 63
Fax +33 1 56 65 86 00
Source: www.inpi.fr and Inlex IP Expertise, France
Nov 19, 2012 (Newsletter Issue 17/12)
Amendments to Trade Mark Act
The Intellectual Property Laws Amendment (Raising the Bar) Bill received Royal Assent from the Governor General on 15 April 2012.
The amendments relating to the Trade Marks Act 1995 will come into effect on 15 April 2013. Some of the changes are:
1) Oppositions
- An applicant will be required to file a Notice of Intention to Defend an opposition to registration.
- An opposed application will lapse if a Notice of Intention to Defend an opposition is not filed
- An extension of time will be available to file the Notice of Intention to Defend
- New Section 231(3) will allow the Trade Mark Regulations to be amended to prescribe matters relating to trade mark oppositions including: a) Rules about filing and serving documents in an opposition; b) Rules about the amendment of documents filed in an opposition; c) The circumstances in which the Registrar may dismiss an opposition under the new Section 99A; and d) Provision for review by the Administrative Appeals Tribunal of decisions of the Registrar made under the regulations.
- A decision of a delegate of the Registrar in opposition proceedings may be appealed to the Federal Magistrate's Court.
2) Infringement of registered trade marks
Section 126 has been amended to allow for the award of additional damages in trade mark infringement matters taking into account matters including:
- The flagrancy of the infringement;
- The need to deter similar infringements of registered trade marks; and
- The conduct of the party that infringed the registered trade mark that occurred.
3) Penalties
The penalties for offences relating to misuse of trade marks, including falsifying or removing registered trade marks, falsely applying registered trade marks, and possessing or selling goods with false trade marks, have been increased.
There have been changes to Customs Procedures as well.
Source: Spruson & Ferguson, Australia
Nov 19, 2012 (Newsletter Issue 17/12)
Accession to Madrid Protocol
Mexico has deposited his country's instrument of accession to the Madrid Protocol on November 19, 2012. The treaty will enter into force with respect to Mexico on February 19, 2013. It brings the total number of members of the international trademark system to 89.
Source: www.wipo.int
Nov 19, 2012 (Newsletter Issue 17/12)
DPMA Web Pages Unavailable Coming Weekend
The German Patent and Trademark Office (DPMA) has informed that their web pages and online databases will be unavailable for scheduled maintenance from Friday, 23 November 2012, 18:00 CET, to Sunday, 25 November 2012, approximately 24:00 CET.
www.dpma.de
Nov 06, 2012 (Newsletter Issue 16/12)New Version of TMEP OnlineThe United States Patent and Trademark Office (USPTO) issued the Trademark Manual of Examining Procedure (TMEP), with an effective date of October 31, 2012. The current version of the TMEP is now identified by the month and year in which it is issued. This is a change from prior versions, which were identified using edition and revision numbers.
USPTO informed that the new online interface, which was made available for preview in September, is now the exclusive interface and search tool for the TMEP. A Highlights document that includes some of the changes set forth in the October 2012 TMEP is also available on the USPTO website.
For more information on the TMEP, please click here
Source: www.uspto.gov Nov 01, 2012 (Newsletter Issue 16/12)
New Transactions through eServices
IP Australia announced the second release of its eServices. eServices is a secure electronic business portal that allows to register, login and conduct selected transactions.
The following transactions are introduced with the second release:
Applications for all IP rights; TM Headstart applications; examination requests for patents; user administration for businesses.
All transactions through eServices can be paid by Visa or MasterCard. Transaction history can be accessed any time. Built-in checks, pre-populated fields and informative help text will assist in completing transactions easily and efficiently, saving time and money.
Over the coming months IP Australia will be adding more transactions and services to the portal.
Source: www.ipaustralia.gov.au
Nov 01, 2012 (Newsletter Issue 16/12)
Official Fees Payable for Each Class
According to Ministerial Resolution no. 06/2012 dated June 21, 2012, the fees for the filing and the renewal of trademark applications will be payable separately for each and every class, and not up to the first 3 classes, as was the practice before.
Source: SMAS IP, Morocco
Nov 01, 2012 (Newsletter Issue 16/12)
Use of Class Headings
The Finnish Office announced that if the list of goods and services of a trade mark applied for before October 1, 2012 includes an entire class heading, the National Board of Patents and Registration of Finland interprets the list of goods and services as covering all goods or services in that class at the time of the application.
From October 1, 2012, the applicants must indicate in the trade mark application whether by using a class heading, the applicant wants the application to cover all goods or services included in the Nice Alphabetical List of that class at the time of the application. This can be done by indicating after the class heading that the application also covers all other goods, or all other services, in that class in the Nice Alphabetical List.
If not clarified, the application will only cover goods or services included in the literal meaning of the individual terms in the class heading.
The Nice Alphabetical List only includes some of the goods or services that are classified in a particular class. If you seek protection for any goods or services not clearly included in any class heading, you should write what the goods or services are, to make it clear that those goods or services are included in the list.
Source: www.prh.fi
Nov 01, 2012 (Newsletter Issue 16/12)Extension of Time Justification Online AvailableThe Canadian Intellectual Property Office (CIPO) announced that a copy of the applicant's justification to support a request for extension of time to file a Declaration of Use is now available via the web application for registration of a trademark.
The justification can be previewed and printed prior to submitting it to the Office. The document will remain accessible through the Transaction Requests History page along with the Extension of Time acknowledgement notice.
For more information on this online enhancement, please contact the Trade-Marks Branch Business Services here
Source: www.cipo.ic.gc.ca Oct 16, 2012 (Newsletter Issue 15/12)
Major Amendments to IP Laws
There have been major changes in the Intellectual Property Laws in Panama due to the implementation of the Free Trade Agreement with the U.S.
Panama has approved the following treaties:
- Trademark Law Treaty (TLT)
- Patent Cooperation Treaty (PCT)
- Budapest Treaty
- UPOV Treaty
Law No. 35 of 1996 has been amended to comply with these treaties and major changes are:
- Multiclass registration system for trademarks is now possible.
- Online registration will be available.
- Elimination of the requirement of authentication and legalization of Powers of Attorney.
- Elimination of the requirement to provide a certificate evidencing the existence of the applicant company.
- New requirement to declare a domicile in Panama for administrative and judicial purposes.
- The concept of registration of Powers of Attorney.
- Official trademark fees have been amended.
- Protection is granted to commercial names without registration being required.
- Mergers, assignments, change of name and address can be done for all the trademarks owned by one company at the same time with just one document.
- The best right system will change from first international use to local use.
- Opposition, nullity and cancellation actions can now be appealed up to the Supreme Court.
- Special rules and regulations on geographic indications.
The new legislation went into effect on October 1, 2012.
Source: Jimenez, Molino y Moreno, Panama and
Alfaro, Ferrer & Ramirez, Panama
Oct 16, 2012 (Newsletter Issue 15/12)New Trademark Law in Force/Official Fees ReducedThe new Trademark Law No. 4072/2012 which was published in the Government’s Gazette on April 11, 2012 is in force since October 11, 2012. For further information on the new Trademark Law please check the news archive of Greece or here
The official application fees for trademarks have been reduced. The fee for filing a trademark is now EUR 110.00 for one class and EUR 20.00 for each additional class (11th class upwards free).
Source: Vayanos Kostopoulos, Greece Oct 16, 2012 (Newsletter Issue 15/12)New Requirements for Merging TMsIn 2010, the UK IPO launched a public consultation which proposed changes to laws governing the merging of trademarks. As a result of this consultation, new requirements for the merging of trademarks have now come into force.
With effect from October 1, 2012, any request for a merger must now meet the following requirements:
- The trademarks must have the same filing date.
- The trademarks must be registered.
- None of the trademarks intended for merger is subject to cancellation proceedings.
- None of the trademarks intended for merger is the base for an international registration still within the 5 year dependency period.
The new form TM17 is available since October 1, 2012 and can be accessed here. The old form TM17 will be rejected by the IPO after December 31, 2012.
For more information of the merger changes please click here
Source: www.ipo.gov.uk Oct 16, 2012 (Newsletter Issue 15/12)
Official Fees Increased
In compliance with the recent Moroccan Industrial and Commercial Property Office (OMPIC) Decision, the official fees for filing trademarks and designs have been increased, which became effective on October 1, 2012.
The new official fee for filing a trademark is MAD 1,200 for the first class and MAD 150 for each additional class.
Source: SMAS IP, Morocco; H & H Consulting Law Firm, Morocco and H.R. Law Firm, Morocco
Oct 16, 2012 (Newsletter Issue 15/12)
Certificates of Registration
The Libyan Trademark Office started issuing registration certificates in 2011, but because of civil unrest in the country the documents were kept on file without notification of the agents of record. In August 2012, the Libyan Trademark Office started distributing the issued certificates to the agents of record. This means that the registration certificates for all pending trademarks that have been accepted and published are expected to be issued in the near future.
The Office is still not functioning at a normal pace. It is currently only examining pending applications and issuing notices of acceptance. As a result, all new applications and search requests are being kept on hold until further notice.
Source: INTA Bulletin, Vol. 67 No. 17
Saba & Co., Lebanon and Jordan
Oct 16, 2012 (Newsletter Issue 15/12)
Accession to Singapore Treaty
The Government of New Zealand has now deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks. The said instrument contained the following declaration:
Consistent with the constitutional status of Tokelau and taking into account the commitment of the Government of New Zealand to the development of self-government for Tokelau through an act of self-determination under the Charter of the United Nations, this ratification shall not extend to Tokelau unless and until a Declaration to this effect is lodged by the Government of New Zealand with the Depositary on the basis of appropriate consultation with that territory.
The Treaty will enter into force with respect to New Zealand on December 10, 2012.
Source: www.wipo.int
Sep 27, 2012 (Newsletter Issue 14/12)
New Rules on TM Coexistence Agreements
On August 21, 2012, the BPTO published a Normative Legal Opinion (INPI/CPAPD 001/2012) consolidating the view that coexistence agreements are to be taken into consideration as an element for the analysis of applications. While the examiners will not be bound by the consent of the owners of the blocking marks and may therefore reject or confirm the rejection of applications if they consider the marks involved as conflicting, the evidence of a consent will constitute a valuable argument to avoid or challenge a rejection.
This Normative Legal Opinion also contemplates the possibility for the examiners to raise office actions inviting the applicants to adjust the list of products or services envisioned or even introduce modifications in the marks themselves so as to permit their coexistence with the earlier marks cited as obstacles.
This Normative Legal Opinion became effective as of its publication.
Source: Annemann Siemen Bigler & Ipanema Moreira, Brazil
Sep 27, 2012 (Newsletter Issue 14/12)10th Edition of Nice ClassificationThe Lebanese Trademark Office has recently shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012.
Source: JAH & Co. IP, Doha, Qatar, www.sabaip.com Sep 27, 2012 (Newsletter Issue 14/12)
Accession to Singapore Treaty
The Government of the Republic of Iceland has now deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks, which will enter into force, with respect to the Republic of Iceland, on 14 December 2012.
www.wipo.int
Sep 27, 2012 (Newsletter Issue 14/12)
New Ministry Name
The Syrian Ministry of Economy & Trade name has been changed to be Ministry of Economy & Trade to Ministry of Internal Trade & Consumer Protection.
Accordingly, the new ministry name will be reflected in all new registration certificates and/or official documents and notifications in respect of Trademarks, Industrial Designs and Models, Patents, Utility model and Layout Design of Integrated Circuits which will be issued by the Industrial and Commercial Property Protection Directorate.
The new Director of Commercial & Industrial Property Protection is Mr. Sahfeeq Azzab.
Source: www.smas-ip.com and George M. Syriani, Syria
Sep 27, 2012 (Newsletter Issue 14/12)
Accession to Madrid Protocol
New Zealand became a member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks on September 10, 2012. The said instrument contained the following declarations:
- In accordance with Article 5(2)(d) of the Madrid Protocol (1989), under Article 5(2)(b) of the Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months and under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit;
- In accordance with Article 8(7)(a) of the Madrid Protocol (1989), New Zealand, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee; and
- Consistent with the constitutional status of Tokelau and taking into account the commitment of the Government of New Zealand to the development of self-government for Tokelau through an act of self-determination under the Charter of the United Nations, this accession shall not extend to Tokelau unless and until a Declaration to this effect is lodged by the Government of New Zealand with the Depositary on the basis of appropriate consultation with that territory.
The Madrid Protocol enters into force on December 10, 2012.
Source: www.wipo.int
Sep 27, 2012 (Newsletter Issue 14/12)
Official Fees Increased
IP Australia announced that the second stage of the fee review implementation has taken place on October 1, 2012. The majority of fee changes occurred on July 1, 2012, with the exception of new IP right application filing fees.
As from October 1, 2012, the official trademark application fee for online filing is AUD 120.00 per class with pick list. The official trademark application fee for filing (electronic or paper) is AUD 200.00 per class without a pick list.
Source: www.ipaustralia.gov.au
Sep 27, 2012 (Newsletter Issue 14/12)
Trademark Manual of Examining Procedure Updated
The United States Patent and Trademark Office (USPTO) announced that a new online version of the 8th edition of the Trademark Manual of Examining Procedure (TMEP) with a new search tool is available. The new version replaces the current online version when the next revision of the TMEP is issued in October 2012.
The new online version is part of a system that will make it easier to revise, update, and publish the TMEP on a more frequent basis to ensure that the latest changes to statutes, rules, procedures, and examining practices are published and available to users.
The new online version features a redesigned user interface and a search system that enables users to conduct highly focused queries using advanced search syntax including Boolean, proximity, and wild-card search capabilities. A “search history” tool allows quick access to a record of searches conducted during a search session. And a flexible interface, whereby users can make various preference changes for browsing the Table of Contents, displaying and viewing search results, and adjusting font sizes and screen setups, makes it easier to navigate across content areas, search results, and viewed documents.
Source: www.uspto.gov
Sep 27, 2012 (Newsletter Issue 14/12)
Patent Reform Now Implemented
The United States Patent and Trademark Office (USPTO) announced that numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation on September 16, 2011.
Some of the new rules are as follows:
- Three new administrative trial provisions - inter partes review, post-grant review, and the transitional program for covered business method patents - will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent.
- The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
- The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
- The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.
Source: www.uspto.gov
Sep 27, 2012 (Newsletter Issue 14/12)
Deposit Account/Credit Card Statements
The Canadian Intellectual Property Office (CIPO) announced that it's clients can now access their deposit account and credit card statements securely on CIPO's website. Clients will now be able to manage and track their own IP service request financial activity through their online statements.
In order to view the online statements, CIPO's Finance Branch must be contacted in writing to link the deposit accounts and/or credit card account to the authorized Industry Canada User(s) in your firm. The name of your firm, deposit account number(s) if applicable, and Industry Canada username(s) need to be included. The request can be sent to cipo.finance.opic@ic.gc.ca
Source: www.cipo.ic.gc.ca
Sep 27, 2012 (Newsletter Issue 14/12)
New Trademark Act in Grenada Introduced
The Trademarks Act of 2012 has now come into effect and replaces the Registration of United Kingdom Trade Marks Act Cap 284 of 1939. Under the new Act the UK-based system has been abolished, and there is only provision for independent registration.
Under the transitional provisions existing UK-based registrations shall continue to have effect as if registered under the new Act.
Source: Spoor & Fisher, British Isles
Sep 27, 2012 (Newsletter Issue 14/12)
Similar and Generic Veterinary Medicines Introduced
The Law No. 12.689/2012 introduces two new modalities of veterinary medicines: the similar and the generic ones. The Law is effective as of October 17, 2012.
The similar and generic veterinary medicines can only be produced after the expiration of the patent of the reference veterinary medicine, so as not to infringe the rights of the patent owner, whether a product or a process.
Similar veterinary medicines must bear the owner's trade name or the trademark and should contain the same active principle, pharmaceutical concentration and form as the reference medicine.
Generic veterinary medicines must be designated by the Brazilian Common Denomination (DCB) or by the International Nonproprietary Name (DCI). They must contain the same active ingredient, concentration and form, administration, dosage and therapeutic indication as the reference medicine. Bioequivalence to the reference medicine, its efficacy and safety must be demonstrated by means of pharmaceutical studies with the Ministry of Agriculture, Livestock and Supply (MAPA).
Rights that may not be protected by a patent, but which allow the exclusive ownership, such as those that grant the exclusive right to use the clinical trials and related dossiers (data protection) provided by Brazilian Law 10,603/2002, should be taken into consideration, for they could eventually delay the launching of some similar and generic veterinary medicine in the market.
MAPA shall shortly publish an ordinance in order to regulate the simplified proceeding of registration of the generic veterinary medicines.
Source: Di Blasi, Parente & Associates, Brazil,
Moeller IP Advisors, Argentina
Sep 02, 2012 (Newsletter Issue 13/12)
Code for Numbering Changed
The BPTO has adopted a new numbering code that meets International standards as of the beginning of 2012.
The final number of the applications will be given at the time of the protocol, enabling the holder’s effective monitoring.
The new numbering follows the following standards:
BR ZZ XXXX YYYYYY K
BR = Code of country (Brazil)
ZZ = Nature of protection
XXXX = Year of filing at BPO
YYYYYY = Number related to the order of filing of applications
K = Check digit of the number of application
The numbers related to the nature of protection as applied as follow:
Patents
ZZ = 10 for first filing or applications claiming foreign priority under Paris Union Convention;
ZZ = 11 for entering into the Brazilian national phase of PCT applications;
ZZ = 12 for divisional patent applications; and
ZZ = 13 for certificates of addition.
Utility models
ZZ = 20 for first filing or applications claiming foreign priority under Paris Union Convention;
ZZ = 21 for entering into the Brazilian national phase of PCT applications; and
ZZ = 22 for divisional applications
Industrial Designs
ZZ = 30 for Industrial Design Application;
ZZ = 31 for applications filed under International Treaties; and
ZZ = 32 for divisional applications.
Geographical indication
ZZ = 40 for Indication of Source application;
ZZ = 41 for Designation of Origin applications; and
ZZ = 42 for applications filed under International Treaties; and
ZZ = 43 for divisional applications.
Patent Applications, Utility Models, Industrial Designs and Geographical Indication filed until 31 December 2011 shall not be renumbered.
Source: Moeller IP Advisors, Argentina
Sep 02, 2012 (Newsletter Issue 13/12)Official Fees IncreasedNew regulations concerning registration of intellectual property have come into force on August 22, 2012, due to the ratification of the Marrakesh Agreement by the Russian Parliament and the further accession of Russia to the World Trade Organization.
The official fees have become uniform for both Russian residents and non-residents, and some of the official fees are changed.
The trademark fees have been raised for foreign applicants. The new official fee for filing a trademark application in one class is RUR 2,700 (about EUR 66) plus RUR 2,050 (about EUR 50) for each additional class.
The official fee for registration of a trademark is RUR 16,200 (about EUR 388), irrespective of the number of classes.
Source: Patentica LLP, Russian Federation Sep 02, 2012 (Newsletter Issue 13/12)Suggestions for Classifications of Goods & ServicesThe Indian Trademark Registry invites suggestions for publication of Classification of Goods and Services issued in a notification on August 16, 2012.
The Registrar of Trade Marks has proposed to publish the classification of goods and services for the purpose of registration of trademarks, under the provision of Section 7 and Section 8 of the Trade Marks Act 1999.
The Registrar shall classify goods and services, as far as possible, in accordance with the International system of classification of trade marks and the Registrar may publish in the prescribed manner an alphabetical index of such classification.
The Registry intends to include the goods and services of the Indian origin which is not mentioned in the Nice Classification, the international system of classification of goods and services which is currently being followed by the Trademark Registry. It has therefore invited suggestions of all the stakeholders including advocates, agents and general public and has requested to point out the goods and services of Indian origin as well as the relevant class for such goods.
Suggestions may be submitted in MS excel format to cgoffice-mh@nic.in with a copy marked to ra.tiwari@nic.in before September 16, 2012.
To access the notification, please click here
Source: S. S. Rana & Co., India Sep 02, 2012 (Newsletter Issue 13/12)
Release version 2.0 of Trademark Status and Document Retrieval (TSDR)
The United States Patent and Trademark Office (USPTO) has released version 2.0 of Trademark Status and Document Retrieval (TSDR).
The new features in TSDR 2.0 include:
- A new “Assignment Abstract of Title Information” section that allows users to both review trademark assignment details and filter assignment data by conveyance type.
- A TSDR document viewer that allows users to simultaneously review multiple documents (e.g., the Office action and subsequent responses) in separate windows.
- A listing of the application’s notice of allowance date.
- URLs featuring file-specific identifiers (serial number, registration number, etc.) that allow for direct access to specific case data and documents. These direct links to trademark application and registration data will make TSDR 2.0 function more like “old” TARR. Entry of the URLs shown in TSDR into the address bar of an Internet browser will result in the display of the requested status data or documents.
- Hyper-links to “parent” or “child” applications of cases that have divided.
On September 8th, all existing direct (static) hyper-links displaying TDR information will be redirected to TSDR. Soon thereafter, the web pages at http://tarr.uspto.gov/ and http://tdr.uspto.gov/ will no longer be accessible.
Questions can be send to TSDR@uspto.gov.
Source: www.uspto.gov
Sep 02, 2012 (Newsletter Issue 13/12)Public Comment Period on TM Fees Announced The United States Patent and Trademark Office (USPTO) has issued a notice seeking public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO.
The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees. The Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO.
Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process.
For further information, please check the notice here. Responses can be sent to TMFRNotices@uspto.gov until October 15, 2012.
Source: www.uspto.gov Sep 02, 2012 (Newsletter Issue 13/12)
New Instructions to Examiners
The Instituto Nacional de la Propiedad Industrial (INPI) issued an internal note with instructions to examiners regarding objections based on the classification of goods and services on May 11, 2012.
These instructions state that:
1. If the examiner objects to the entire description of goods or services of a trademark application and the applicant’s response does not meet the examiner’s criterion, the application will be rejected.
2. If the examiner’s objections relate only to some goods or services of an application and the applicant’s response to the objection does not satisfy the examiner’s criterion, the application will continue its prosecution but the goods or services objected to will be excluded ex officio.
Previously, if the applicant’s response to an objection regarding the classification of goods or services was not accepted, the INPI would reject the entire trademark application, even in those cases where the objection applied only to specific goods and services.
The new instructions do not alter the substantive law. Applicants who disagree with a decision rejecting or partially excluding goods and services may still appeal to the INPI and, subsequently, before the Federal Courts.
Source: INTA Bulletin, vol. 67, no. 14, August 1, 2012
Sep 02, 2012 (Newsletter Issue 13/12)
New Opening Hours in the Munich Office
The German Patent and Trademark Office (DPMA) announced the change of the opening hours in the office of Munich (Zweibrückenstr. 12, 80331 Munich) with effect from October 1, 2012.
The new oppening hours are
Monday to Thursday 7.30 am – 3.00 pm
Friday 7.30 am – 2.00 pm
Source: www.dpma.de
Sep 02, 2012 (Newsletter Issue 13/12)
New Industrial Property Law
Law No. 290/2012 has been enforced in Cuba on April 1, 2012. The law is e.g. covering Patents, introducing Utility Models, changing the definition of industrial models/designs.
A brief summary of the changes introduced by the new law are:
- It is now possible to seek protection for utility models.
- Patent applications will be published in order to enable third parties to file oppositions.
- Patents can only refer to products and to processes.
- The definition of what is considered an invention has been changed.
- The subject matter excluded from patentability as well as what is considered a patentable microorganism have been defined in more detail.
- Patents will have the duration of 20 years counted as from filing date. This is also valid for patents that were still in force in January 2005. The Cuban Patent Office has already started issuing Patent Certificates containing the new duration for patents granted under the former law.
- Inventors' Certificates will be transformed into patents in those cases in which the subject matter allows it.
The new law also contains a clear difference of what can be protected as industrial model and what as a design, as well as a detailed description of proceedings, which include publication in order to allow third parties to file oppositions, examination, and payment of annuities.
Source: Moeller IP Advisors, Argentina
Sep 02, 2012 (Newsletter Issue 13/12)
Direct Link to Trademark Official Gazette Page
The United States Patent and Trademark Office (USPTO) is committed to continuous improvement of its online systems. Beginning September 4, 2012, trademark applicants who have authorized communications by e-mail will receive a direct link to the page on which their mark in the “Trademark Official Gazette Publication Confirmation” notice issued on the date the mark publishes in the Trademark Official Gazette (TMOG). This will allow applicants to access the page in the TMOG where the mark publishes, rather than having to download the entire TMOG.
On the publication date or shortly thereafter, applicants should review the information that appears in the TMOG for accuracy. To request correction of any USPTO data-entry error after publication, applicants need to e-mail the requested correction to TMPostPubQuery@uspto.gov.
The post-publication amendment form is needed for applicant amendments or corrections after publication (but before issuance of a Notice of Allowance or registration, including if an extension of time to oppose has been filed). The form is available at http://teasroa.uspto.gov/ppa/.
Source: www.uspto.gov
Sep 02, 2012 (Newsletter Issue 13/12)New Instructions for ExaminationsRomania’s PTO has issued new instructions for the examination of trademarks and geographical indications, in effect as of August 1, 2012.
The new instructions aim to optimize the workflow within the PTO and ensure a fast and efficient examination procedure.
Some of the changes are:
- All requests concerning new trademark and GI applications or existing registrations are to be processed immediately upon receipt.
- With regard to trademarks, the PTO will conduct an examination as to relative grounds for refusal (search for prior identical or confusingly similar trademarks). However, it is still unclear, whether earlier rights could be cited to refuse a trademark on the basis that it does not meet the general conditions for registration set forth in the law. Clarifications from the PTO regarding this are expected shortly.
- PTO provisions on the examination of trademarks will closely follow OHIM’s examination manual.
- PTO will analyze oppositions and/or observations requests without taking into consideration whether the examination fees for the application against which the opposition is filed, are paid.
- Expedite examination of trademarks must be requested when filing the application form. The fee for expedite examintation must be paid when filing the trademark application.
- In case of multiple oppositions they are analyzed and decided upon in chronological order.
- Minor changes will be made to the trademark application form.
For further information please also check the article of Ms Aura Campeanu here
Source: www.petosevic.com Sep 02, 2012 (Newsletter Issue 13/12)Amendments to Trademark LawThe Law on amendments of the Trademark Law in Montenegro entered into force on August 17, 2012. Namely, the referenced Law on amendments of the Trademark Law in Montenegro was published in the Official Gazette of Montenegro No. 44/12 on August 9, 2012.
The Law on amendments clarifies the procedure for filing national and international trademark applications. Namely, after filing new trademark application, the IPO of Montenegro examines the formal requirements of the same. If the formal requirements are not fulfilled, the IPO of Montenegro invites the applicant to submit the missing documents. The deadline for submission of the necessary documents is 30 days as from the receipt of the invitation (this term is not extendable). In case the Applicant meets the deadline of 30 days and the missing documents are submitted, the filing date of the trademark application will be the date of fulfilling the formal requirements. In case the applicant does not fulfill requirements within the deadline of 30 days, the application will be rejected.
According to the provisions of the Trademark Law, the renewal fees paid in a grace period (six months after the renewal due date) had to be paid with fine 100%. However, according to the amendments of the Trademark Law, the renewal fees paid in the grace period have to be paid with fine of 50%.
The Trademark Law is amended with the provisions regulating the opposition against International Registrations. The deadline for filing the opposition (90 days) is to be counted as from the first day of the month following the month of publication of the WIPO Official Gazette in which the International Registration is published. In case the International Registration is preliminary refused based on filed opposition, the IPO of Montenegro will invite the applicant to name the representative. The deadline to name the representative is 4 months as from the receipt of the referenced official invitation. The deadline to respond to an opposition is 60 days as from the receipt of the opposition by the named representative.
Source: Zivko Mijatovic & Partners, Montenegro Sep 02, 2012 (Newsletter Issue 13/12)
Announcement with respect to Examination Guideline
The Korean Intellectual Property Office (KIPO) announced amendments to the examination guideline on August 17, 2012. KIPO is not going to refuse a trademark application based on a similar prior service mark anymore unless the prior service mark owner files an opposition. Under the same rule, KIPO is not going to refuse a service mark application based on a similar prior trademark anymore unless the prior trademark owner files an opposition.
Before the announcement the Examiner refused trademark application based on a similar prior service mark and vice versa.
Source: Markkorea Patent and Law Firm, South Korea
Sep 02, 2012 (Newsletter Issue 13/12)
Examination of Applications Remain the Same
The Intellectual Property Office of the Philippines (IPOPHL) has announced that there will be no difference in the substantive examination of applications received by way of Madrid Protocol or by way of national application. In other words, the applications will be examined in the chronology by which they are received and no preference will be given to one type of application over the other.
Moreover, international registrations extending to the Philippines will also be subject to the requirements of a Declaration of Actual Use (DAU). The DAU and the corresponding fees have to be filed with IPOPHL through a resident agent.
Source: patrick mirandah co, Philippines
Sep 02, 2012 (Newsletter Issue 13/12)
Official Warning
The German Patent and Trademark Office (DPMA) has issued an official warning.
Fraudsters have been directly contacting patent and trademark owners. They pretend to be official representatives from the DPMA and marke use of fake service identification cards. They try to collect fees. The DPMA expressly points out that they do not employ such sales representatives.
Source: www.dpma.de
Aug 07, 2012 (Newsletter Issue 12/12)
IIPO Closed
The Indonesia Intellectual Property Office (“IIPO”) & corps annouced that it will be closed , as follows:
17 August 2012 in respect with Independence Day; and
20 August until 22 August 2012 in respect with Celebration of Eid Ul Fitr 1433 H.
All official deadlines shall be considered as fall on the next working day.
Source: AMR Partnership, Indonesia
Jul 31, 2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Malaysian Trademark Office has adopted the 10th Edition of Nice Classification as of January 1, 2012. Applications filed after December 31, 2011 are classified according to the 10th Edition.
Application filed before January 1, 2012 are classified according to the 9th Edition of Nice Classification. The Trademark Office also indicated that there will be NO re-classification of applications filed before January 1, 2012.
Source: Simonian IP, USA
Jul 31, 2012 (Newsletter Issue 12/12)Most Creative CountryThe Global Innovation Index 2012 Report has been published by the World Intellectual Property Organization (WIPO) in conjunction with the international business school INSEAD. The report ranks 141 countries and economies on the basis of their innovation capabilities and their results.
The top 10 leading countries are:
1. Switzerland – 2. Sweden – 3. Singapore – 4. Finland – 5. United Kingdom – 6. Netherlands – 7. Denmark – 8. Hong Kong (China) – 9. Ireland – 10. United States of America
To access the report, please click here
Source: www.wipo.int Jul 31, 2012 (Newsletter Issue 12/12)New Website LaunchedThe Intellectual Property Office of Singapore (IPOS) has recently launched a new website. The source is available in English and contains official information on patents, trade marks, registered designs, plant varieties and copyright, such as annual reports, legal texts, statistics and useful links. Users can also find links to all the e-services from e-filing to e-search, along with further details on filing an application at IPOS, forms and fees and information about IP service providers.
To access the new website, please click here
Source: www.epo.org Jul 31, 2012 (Newsletter Issue 12/12)
Accession to the Madrid Protocol Now Effective
The Madrid Protocol has become effective in the Philippines on 25 July 2012. It is now possible to file for international registration of trademarks.
Source: www.ipophil.gov.ph
Jul 30, 2012 (Newsletter Issue 12/12)
10th Edition of Nice Classification
The Indonesian Trademark Office has adopted the 10th Edition of Nice Classification.
Source: Simonian IP, USA
Jul 30, 2012 (Newsletter Issue 12/12)Grants for Registering CTM and IR The Italian Ministry for Economic Development is providing non-returnable grants to companies who wish to register their trademarks abroad as Community trademarks (CTM) or international designated trademarks (IR). The announcement was published in the Italian Official Journal No 105 of 7 May 2012.
a) A grant of 80% of costs incurred up to a maximum of EUR 4,000 per CTM application filed, up to a maximum grant per company of EUR 15,000 for applications filed for registration of CTMs with the OHIM after the publication of the call.
In order to access the grants companies need to have carried out at least one of the following activities:
- Filed an application for registration with the OHIM for a new trademark;
- Filed an application for registration with the OHIM for an owned trademark registered or filed nationally;
- Filed an application for registration with the OHIM for a trademark acquired from a third party that was already registered or filed nationally.
b) A grant of 80% of costs incurred up to maximum of EUR 4,000 (EUR 5,000 with a 90% grant if designating China or Russia) for each application for an international trademark designating a single country, and EUR 5,000 (EUR 6,000 with a 90% grant if designating China or Russia) for applications designating two or more countries. The maximum grant per company is EUR 15,000.
Measure b) is available to companies that on the date of filing of the application own a trade mark registered at Community or national level, including those who have acquired such marks from third parties, or who have already filed an application for a national or Community trade mark: grants are available for extension of the said marks by means of the WIPO procedure and are also available for subsequent designations.
Resources for both measures will be assigned on a first-come, first-served basis in accordance with the chronological order of applications made (considered filed as of the moment of submission of the online form) while funds last. Only costs incurred between 7 May 2012 and the date of filing of the application will be eligible.
Grant applications may be made as of 4 September 2012.
The following expenses are eligible for reimbursement: design of the new trade mark; prior art searches and assistance in the application process; assistance for purchasing of trademarks filed or registered at national level; assistance for the licensing of the trademark; filing fees.
For further information on the grant and forms, please click here
Source: Rapisardi Intellectual Property, Italy Jul 30, 2012 (Newsletter Issue 12/12)
Changes in TM Routine
The head of the Trademark Office in the UAE advised that it has been decided to change some stipulations related to the issuance of the final registration certificate of a trademark.
It is been stated that the filing number will become the registration number of the mark. This new change will apply to pending applications as well as new ones.
Source: NJQ & Associates
Jul 30, 2012 (Newsletter Issue 12/12)Deposition of Accession to Madrid Protocol Soon ExpectedThe Intellectual Property Office of New Zealand (IPONZ) has issued a discussion document relating to amendments to the Trade Marks Regulations 2003 that will be necessary to implement the Madrid Protocol system of International registration of trade marks.
Details of its proposed timetable has been released by the IPONZ when the Madrid Protocol system should go live. This includes four months of system testing, consultation on the regulations and final drafting, followed by user training in October and November 2012.
Once the regulations are finalised, the IPONZ is expected to deposit an instrument of accession with the WIPO. IPONZ hopes to be in a position to file the instrument of accession in September. Within three months of this, New Zealand should be accepted into the system, and IPONZ is preparing itself to accept Madrid Protocol filings by the end of this year.
Source: A J Park, New Zealand Jul 30, 2012 (Newsletter Issue 12/12)Changes to Trademark ServicesThe United Kingdom Intellectual Property Office (UKIPO) is implementing a new IT system for processing trademarks in order to increase its processing efficiencies and introduce some customer enhancements including more user friendly access to information and web services. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.
Phase 1
- Notice of Threatened Opposition: New layout e-form TM7A which should be used for filing notices of threatened opposition.
- Notice of Opposition and Statement of Grounds: New layout of form TM7 and available in PDF fillable format.
- New Style Journal: International UK designations and UK applications will be integrated and published in one Journal. The Journal numbering will change (to reflect week and year).
- New Style Examination Report: For International UK designations, taking into account feedback from customers.
Phase 2
- 'Ecaveats' Changes to 'eAlerts': eAlerts has enhanced features allowing customers to monitor the progress or status of a trade mark by requesting alerts for specific events all FREE of charge. This service is also available for International Registrations designating the UK.
- Trade Mark e-Renewal: A new ‘e’ trade mark service for fast, efficient online renewal and payment, using form, eTM11. The service provides timely email receipt acknowledgements, with the Certificate of Renewal emailed as a PDF attachment once payment has cleared.
- Trade Mark e-Application: Some of the changes include i.e. a more user friendly language and better examples to aid customer completion as well as a goods and services classification search tool located within the application process.
For further information and full details, please click here
Source: www.ipo.gov.uk Jul 17, 2012 (Newsletter Issue 11/12)
10th Edition of Nice Classification
The Industrial Property Institute of Mozambique announced that Mozambique has adopted the 10th edition of the Nice Classification.
Source: Braz & Associates, Mozambique
Jul 17, 2012 (Newsletter Issue 11/12)
New Trademark Act Effective
Taiwan’s newly amended Trademark Act entered into force on July 1st 2012, a year after the promulgation date.
The new Trademark Act, among other things, enlarges the scope of protectable subject matter to allow all forms of sensory signs that are distinctive enough to identify goods or services from others to be registered as a trademark. Some forms of non-traditional symbols are exemplified in the trademark law, such as colours, three-dimensional shapes, motions, holograms and sound, but such examples are not exhaustive.
Under the recently published Examination Guidelines for Non-traditional Trademarks, a position mark that highlights a certain drawing, colour or three-dimensional symbol on a particular position of a product or location of a service provider may also be registered. Designs or decorations of a business location and product packaging are categorized as the same type of a three-dimensional shape, and will be examined under the same distinctiveness standard for trademarks. In addition, scent, taste and texture that bring a certain sensation to consumers are also taken into consideration under the Examination Guidelines.
Source: Tsai Lee & Chen, Taiwan
Jul 17, 2012 (Newsletter Issue 11/12)New Trademark CircularThe Registrar of Trademarks in Sudan has issued Trademark Circular No. 1 on 18 June 2012. It was adressed to all IP Agents and Trademarks Owners for the purpose of organization of work and procedures and came into effect on 8 July 2012:
1. Upon submission of the new trademark applications the Trademarks Registrar will request the applicant to complete or correct the application within one month if he finds out that the newly filed application is incomplete or incorrectly filled up; otherwise the application will be considered abandoned.
2. The applicant must pay the registration fees of a trademark and complete registration procedures and issuance of registration certificate within 2 months from the expiry of opposition term (maximum 8 months) in accordance of article no. 18 Law 1; otherwise the application will be considered abandoned.
3. It is a must to comply with the relevant provisions of article no. 19 (1) of the Sudanese Trademarks Law in the effect that application for renewal of a trademark registration should be filed within six months before expiry of registration term with a grace period of six months after expiry date for late renewal with penalty. The Registrar has allowed a six months from 8 July 2012 for renewal of trademarks that have already expired and not renewed on time, otherwise the registrations will be considered lapsed.
4. The Power of Attorney stamped by the corporate seal of the company and notarized by Notary Public will be acceptable without legalization up to the Sudanese Consulate. However, the Extract from the Commercial Register and the Certificate of Incorporation are still required to be legalized up to the Sudanese Consulate in compliance with article no. 10 (1) of the Sudanese Trademarks Law of 1969.
According to the old practice adopted at the Sudanese Trademarks Office it was permitted to file trademark applications and obtain filing number and date as well as the official filing certificate without the complete required documents which can be submitted at a later stage after filing within a period of three months; whilst the Registrar now issued internal circular to the staff of the Trademark Office to receive applications only when the notarized Power of Attorney and the legalized Certificate of Incorporation are submitted along with the application.
Source: JAH, Doha, Qatar Jul 17, 2012 (Newsletter Issue 11/12)
Credit Card Payments to IPONZ
From 1 July 2012 all clients who wish to make payments for services by credit card are required to provide their CSV number as well as their credit card number and expiry date in order to complete the transaction.
Source: www.iponz.govt.nz
Jul 17, 2012 (Newsletter Issue 11/12)10th Edition of Nice ClassificationThe Yemeni Trademarks Registrar will start using the 10th edition of Nice Classification as of August 1, 2012.
Source: JAH, Doha, Qatar Jun 25, 2012 (Newsletter Issue 10/12)IP Office Is RelocatingThe Industrial Property Office in Qatar has moved to new premises as per the following address particulars:
The Industrial Property Office
Al Jeedah Building
First Floor
Khalifa Street
PO Box 1958
Doha, Qatar
Tel +974 4012 2222
Fax +974 4494 5000
Mail mbt@mbt.com.qa
www.mbt.gov.qa
The flow of work has not been ceased due to this relocation and they are normally functioning.
Source: JAH & Co. IP, Doha, Qatar Jun 25, 2012 (Newsletter Issue 10/12)
Accession to TLT
The World Intellectual Property Organization (WIPO) has informed that the Government of the Grand Duchy of Luxembourg deposited on May 11, 2012 its instrument of ratification of the Trademark Law Treaty (TLT). The Trademark Law Treaty will enter into force on August 11, 2012.
The Grand Duchy of Luxembourg being the last Member State of the Benelux Organization for Intellectual Property to have deposited its instrument of ratification of the Trademark Law Treaty, the said Treaty will enter into force with respect to the Kingdom of the Netherlands in Europe and the Kingdom of Belgium, on the same date.
Source: www.wipo.int
Jun 25, 2012 (Newsletter Issue 10/12)
New Patent and TM Resource Center
The United States Patent and Trademark Office (USPTO) announced that the University of New Hampshire School of Law Library, which was designated as the Concord Patent and Trademark Resource Center (PTRC.) on January 30, 2012, is now open to serve the intellectual property (IP) needs of the public.
Currently, PTRC designated libraries can be found in 46 states, the District of Columbia and Puerto Rico. This network of more than 80 public, academic, state and special libraries assists a variety of customers including inventors, intellectual property attorneys/agents, business people, researchers, entrepreneurs, students and historians.
In addition to offering free electronic services and resources designed to support the intellectual property needs of local and state patrons, the Concord Patent and Trademark Resource Center will employ USPTO-trained librarians to provide customer assistance on the use of the agency’s patent and trademark databases and public seminars on intellectual property topics for novice and experienced users. UNH was the first law school in the U.S. to offer a patent law and prosecution program and the recently opened Franklin Pierce Center for Intellectual Property offers a growing menu of academic, professional and practice programs and activities.
Source: www.uspto.gov
Jun 25, 2012 (Newsletter Issue 10/12)Official Fees IncreasedThe Intellectual Property Office of Portugal has increased its official fees under Administrative Order No 176/2012 of May 31, 2012. The new fees for applications for the registration of trademarks came into force on June 10, 2012.
The new trademark application fee has changed from EUR 101.40 to EUR 120.00 in one class. The fees for additional classes remain the same with EUR 30.42.
Source: J. Pereira da Cruz, S.A., Portugal and Raul César Ferreira (Herd.), S.A., Portugal Jun 25, 2012 (Newsletter Issue 10/12)
Assessment of Accuracy of Register
The U.S. Patent and Trademark Office (PTO) implemented a pilot study program in order to assess the accuracy and integrity of the register effective June 21, 2012. The two-year pilot study applies to use-based applications as well as maintenance filings or amendments made in connection with the registered marks. As a result of this pilot study program, your use-based application or existing registration in the U.S. may be subjected to additional proofs of use inquiries and/or requirements.
The study permits the random selection of up to 250 cases per year for further scrutiny insofar as marks that are actually in use in the U.S. and so as to verify the accuracy of identifications of goods and services. The PTO may require additional proofs of use per class and/or other information and materials to support use of mark. In such instances, the applicant/registrant will have at least six months within which to comply with the request.
Source: Silverberg Goldman & Bikoff, LLP, Washington, U.S.
Jun 25, 2012 (Newsletter Issue 10/12)New gTLD Name Applications RevealedThe Internet Corporation for Assigned Names and Numbers (ICANN) has revealed the list of applicants for new generic Top-Level Domain (gTLD) names.
A total of 1,930 new gTLD applications were received during the application period of the new generic Top-Level Domain program. The applications will now be subject to a public comment, objection period and evaluation system.
A 60-day comment period has started, allowing anyone in the world to submit comments on any application, and the evaluation panels will consider them. Objection against an application needs to be filed until January 13, 2013.
To asscess the full list of the new applications, please click here
Source: www.icann.org Jun 25, 2012 (Newsletter Issue 10/12)
Withdrawing from Madrid Agreement
Syria has cancelled its association with Madrid Agreement for the international registration of marks but will continue the association with Madrid Protocol for international registration according to the Presidential Decree No 179 of May 27, 2012.
Source: George M. Syriani, Syria
Jun 25, 2012 (Newsletter Issue 10/12)Trademarks Act ChangedOn June 1, 2012, the Icelandic parliament (PTO) passed a bill to amend the 1997 Trademarks Act . The bill introduces various changes that benefit trademark owners and entered into force on June 14th, 2012.
The most important changes are:
- Introduction of an administrative invalidation process for trademarks
- Bad faith clause re-instated
- PTO is required to give access to pending trademark applications upon specific request
- All communication with the PTO must now be conducted in Icelandic
- Right to reinstate trademark or trademark application if the term to respond to a refusal or renewal has been missed
- Division of applications and registrations
- New official fee for filing oppositions
For further information please also check the article of Mrs Brynhildur Palmarsdottir from Arnason Faktor, Intellectual Property Consulting here
Source: Arnason Faktor, Iceland
May 30, 2012 (Newsletter Issue 9/12)
Accession to Madrid Protocol
Colombia became a member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks on May 29, 2012.
The treaty will enter into force with respect to Colombia on August 29, 2012.
Source: www.wipo.int
May 29, 2012 (Newsletter Issue 9/12)Official Fees Soon IncreasedIP Australia announced an increase of its official fees. The majority of fee changes will occur on July 1, 2012, with the exception of new application filing fees changing from October 1, 2012.
To access the new trademark fee structure, please check here
Source: www.ipaustralia.gov.au May 29, 2012 (Newsletter Issue 9/12)
Multiple Class Registration Now Possible
The Registration Office is now accepting multiple class registration. Previously this was objected.
It depends on the Registrar, and the new officer is currently allowing one application covering multiple classes.
Source: Tin Ohnmar Tun & The Law Chambers, Myanmar
May 29, 2012 (Newsletter Issue 9/12)
Accession to the Madrid Protocol
Philippine trademark holders and applicants can now file more easily trademark applications in more than 80 countries after President Benigno Aquino III signed the Instrument of Accession of the Philippines to the Madrid Protocol on 25 April 2012. Madrid Protocol operations in IPOPHL will commence on 25 July 2012.
Currently, a Philippine trademark holder seeking protection abroad has to apply separately in every country of interest. This involves different application forms, languages and payments in different currencies.
The Madrid Protocol will provide a cost-effect, centralized procedure that will allow a trademark owner to obtain protection for its mark in different countries by filing one international application in the Intellectual Property Office of the Philippines (“IPOPHL”).
Source: Bengzon Negre Untalan Intellectual Property Attorneys, Philippines
May 29, 2012 (Newsletter Issue 9/12)Ratification of Singapore TreatyThe Law of the Republic of Kazakhstan on “Ratification of Singapore Treaty on the Law of Trademarks”, dated April 8, 2012, entered into force. It was officially published in the “Kazakhstanskaya pravda” 2012 № 100-101 (26919-26920) and “Egemen Kazakhstan” on April 13, 2012 № 149-151 (27224).
Source: Tagbergenova & Partners, Kazakhstan May 29, 2012 (Newsletter Issue 9/12)Trademark Law AdoptedThe Law of the Republic of Kazakhstan “On the introduction of amendments to several legislative acts of the Republic of Kazakhstan on the matters regarding the intellectual property” (the “Law”) was adopted on January 12, 2012. The Law came into effect on January 31, 2012.
The Law amended, among others, the Criminal Code of the Republic of Kazakhstan, the Civil Code of the Republic of Kazakhstan, the Administrative Code of the Republic of Kazakhstan, the Law of the Republic of Kazakhstan “On Copyright and Neighboring Rights”, the Law of the Republic of Kazakhstan “On the Protection of Selection Inventions”, the Patent Law of the Republic of Kazakhstan, the Law of the Republic of Kazakhstan “On Trademarks, Service Marks and Appellation of Origin” (the “Trademark Law”), and the Law of the Republic of Kazakhstan “On the Legal Protection of Topographies of Integrated Circuits”.
The basic amendments introduced by the Law to the Civil Code, the Trademark Law and the Patent Law are as follows:
- A contradiction in Kazakhstani legislation regarding the non-use grace period for trademarks has been resolved. Now both the Civil Code (Article 1028) and the Trademark Law (Article 19.4) determine three years from the registration date as the non-use grace period.
- The term of preliminary examination was decreased from two (2) months to one (1) month from the application filing date.
- The term of substantial examination was reduced from 12 months to 9 months from the application filing date.
- The period for which a design patent is issued was extended and is now 15 years from the filing date (prior to the adoption of the Law, such period was 10 years).
Source: Tagbergenova & Partners, Kazakhstan May 29, 2012 (Newsletter Issue 9/12)
Ratification of Singapore Treaty
United Kingdom of Great Britain and Northern Ireland ratified to the Singapore Treaty on March 21, 2012.
In conformity with Article 28(3), the said Treaty will enter into force on June 21, 2012.
Source: www.wipo.int
May 29, 2012 (Newsletter Issue 9/12)
First Compulsory License
In a much-awaited decision the Indian Patent Office issued its first compulsory licensing order relating to generic drugs.
On March 9, 2012, the Indian Patent Office allowed Natco Pharma Ltd, an Indian generic drug manufacturer to manufacture and sell generic version of a blockbuster cancer drug patented by the German Bayer Corp, thus invoking the compulsory license provisions of the Patents Act. The Patent Controller held that the the drug was exorbitantly priced, which conflicts with public requirements because the medicine was not affordable for many of them. While granting the compulsory license to Natco, the Patent Controller imposed certain conditions. This included that the price of the drug shall not exceed a certain amount for a month’s treatment, and that the licence is non-exclusive and non-assignable. In addition, Natco must pay royalty on net sales, manufacture on its own and sell only in India, and supply the drug free of cost to a certain amount of needy and deserving patients each year. Bayer has appealed against the order before Intellectual Property Appellate Board (IPAB).
Source: Lex Orbis IP Practice, India
May 15, 2012 (Newsletter Issue 8/12)
Accession to Madrid Protocol
On Wednesday April 25, 2012, Mexico's senate approved the accession to the Madrid Protocol. At this moment it is unclear when it will be enforced or what will happen with the opposition system, since the Mexican Intellectual Property Law does not contemplate opposition.
Source: SAC Abogados, Mexico
May 15, 2012 (Newsletter Issue 8/12)
eServices Launched
IP Australia announced the launch of its eServices to register, login and conduct selected transactions.
In the first release of eServices customers can renew all IP rights, submit trade mark registrations electronically and pay for them online using VISA or MasterCard. New features such as the option to save your requests can be accessed as well. Furthermore, the eServices transaction history can be seen and the details can be updated.
The services and transactions within eServices have built-in checks and pre-populated fields to save you valuable time and help ensure the accuracy of the information.
Over the coming months IP Australia will be adding more transactions and services to the portal.
Source: www.ipaustralia.gov.au
May 15, 2012 (Newsletter Issue 8/12)Amended Trademark Act Soon EffectiveThe Taiwan Trademark Office announce that the amendment to the Trademark Act will be effective on July 1, 2012. The amendment was promulgated on June 29, 2011.
Key points of the amendment are:
- Scope of protectable trademarks is extended: Protection to more non-traditional marks, such as motion and hologram marks
- Modes of trademark use are specified: Online trademark use
- Accepting priority rights based on exhibition
- Installment payment for registration fee is abolished
- Reinstatement of registration is available after failure to pay registration fee in time
- A letter of consent is no longer guaranteed to prevent citation of conflicting prior rights
- Proof of use of a trademark will be required to support a cancellation action based on a prior trademark registration
- New provisions have been added to enhance protection against trademark infringement and to strengthen enforcement of border control measures
For further information on the amendments, please click here
Source: Lee and Li, Attorneys-at-Law, Taipei, Taiwan,
Baker & McKenzie Taipei, Taiwan May 15, 2012 (Newsletter Issue 8/12)Digital Signature Soon EffectiveThe digital signature will become effective in Paraguay as of June 2012 in all types of public or private transactions in any country of the world. In order to obtain electronic certificates, interested individuals will have to request it at a Certifying Company, showing their Identification Documents. The certificate can be granted through a card, a pen drive, or by downloading a software. The costs to obtain digital signatures will oscillate between USD 40 and USD 100, and their validity can be granted for one day or up to two years.
Source: Berkemeyer Attorneys and Counselors, Paraguay May 14, 2012 (Newsletter Issue 8/12)IP Regulation ModifiedIntellectual Property regulations in Mexico were recently modified due to the amendments to the Industrial Property Law (IPL) that were published the on January 27, 2012 in the Mexican Official Gazette, and became effective on January 30, 2012.
The amendments to the IPL include changes in connection with the service of notice of official communications issued by the Mexican Institute of Industrial Property (MIIP), the legal implications of disallowing the practice of a visit of inspection to the MIIP’s commissioned inspectors, the inclusion of new causes for infringement of IP rights, as well as a new penalty for those infringement actions committed with the knowledge that an infringement was being committed.
For further information, please also check the article of Mr. Eugenio Ruíz from Becerril, Coca & Becerril here
Source: Becerril, Coca & Becerril, Mexico May 02, 2012 (Newsletter Issue 7/12)New Trademark LawThe new Greek Trademark Law No. 4072/2012 was published in the Government’s Gazette on April 11, 2012 and will be set into force as of October 11, 2012.
The main features of the new law include:
- E-filing possible
- Examiner will decide on absolute and relative grounds of refusal to speed up the registration procedure
- Official fees will be reduced
- Opposition term shortened to 3 months
- Faster electronic publication facility for accepted applications
- Codifies various provisions of the Greek law governing CTMs and International Registrations
- A trademark license agreement may be recorded upon petition o either the licensor or the licensee without the need for submission of the license deed and its examination by the Administrative Trademarks Committee.
For further information please also check the article of Dr. Nikolaos Lyberis from Vayanos Kostopoulos Law Firm here
Source: Vayanos Kostopoulos Law Firm, Greece May 02, 2012 (Newsletter Issue 7/12)
Change of Practice for Renewals
The Palestinian Trademark Office of West Bank has introduced publication procedure for trademarks that are due for renewals.
Accordingly, renewal applications will not be accepted unless accompanied by the prescribed publication fees. Activation of this procedure has initially resulted in an increase in the official fees.
Source: www.smas-ip.com
May 02, 2012 (Newsletter Issue 7/12)
Class Headings No Longer Acceptable
The Trademark Office issued an official notification on April 11, 2012 that claiming class headings are no longer acceptable. Applicants will no longer be able to file an application claiming the whole class without specifying the particular goods / services. The actual language of the goods or services specified in the registration will define the parameters of the scope of protection of a registration. This new decision applies to all new applications. As for pending applications, an office action is expected to be issued at the time of examination in case the list of goods/services claimed requires modification. Applicants will be informed accordingly.
Source: www.sabaip.com
May 02, 2012 (Newsletter Issue 7/12)
Trademark Law Amended
The Law N° 20,569 that amends the Industrial Property Law became effective on February 06, 2012 in Chile. It standardizes and improves the process for the application for trademarks. With this amendment, the legislation adjusts to TLT (Trademark Law Treaty) published in the Official
Gazette on February 16, 2012.
The main modifications are the following:
- Single form acceptable:
One TM form is allowed to apply for a registration of goods and services, which will origin a single registration.
- Division of applications:
It is possible to divide registrations and applications, keeping the corresponding filing, registration and priority dates. Regarding applications, this will lead that in case oppositions and/or observations are met in connection with one of the different classes covered by an application, the same can be divided allowing a faster registration of the TM in those classes not facing objections.
The division of registration may be requested even when its validity is challenged by means of an annulment trial or during the appeal thereof.
- Power of attorney:
A simple power of attorney is enough in order to represent a national or foreign applicant at the Trademark and Patent Office as well as in front of the Industrial Property Court. Certifications of faculties are needed in case the power is given on behalf of a corporation, which must be in original or notarized.
Applicant is allowed to file patents or trademarks without having the power of attorney, which will have to be filed within the following 30 days for nationals and 60 days for foreigners.
Nevertheless it is maintained the procedure according to which the Patent and Trademark Office will require in a period of 60 days, the submission of the power of attorney if the same has not been submitted by the deadline.
Finally the powers in order to abandon or withdraw an application must be expressly granted to the representative.
Source: Moeller IP Advisors, Argentina and
Silva & Cia Attorneys at Law, Chile
May 02, 2012 (Newsletter Issue 7/12)
Pharmaceutical Labeling Requirements
The Pharmacists Ordinance has recently been amended and requires as from August 1, 2012, that labels of both prescription pharmaceuticals and any over-the-counter (OTC) pharmaceuticals will have to include several important details, including the brand name of a preparation in four languages, Hebrew, Arabic, English and Russian.
At present, only non-prescription pharmaceuticals which are permitted for general sale (i.e., which are not sold in a pharmacy or by a pharmacist) are required by applicable administrative regulations to be labeled with the pharmaceutical's brand name in four languages - Hebrew, English, Arabic and Russian. Other pharmaceuticals - namely, any pharmaceuticals dispensed in a pharmacy or by a pharmacist (either with or without a prescription) - have so far been required to be labeled with the brand name in Hebrew and in English.
A revised Practice Guideline of the Ministry of Health, which would set forth the specific guidelines for labeling pharmaceuticals in this regard, is soon expected.
In light of the new labeling requirements, it is recommended to apply for Israel trademarks for the pharmaceutical brand-name in each of the four languages: Hebrew, Arabic, English and Russian.
Source: Reinhold Cohn Group, Israel
and IP Factor, Israel
May 02, 2012 (Newsletter Issue 7/12)
Enhancement to Case Management System
The Intellectual Property Office of New Zealand (IPONZ) has enhanced its case management system:
1) Renewal reminder
The renewal reminder discussions for trade marks and designs will now include the renewal due date.
The due date can be seen without needing to open the attached pdf document.
2) Ability to delegate cases by case contact
It is possible to search by case contact (external user in charge) on the delegate case contact screen.
This will make it easier for an administrator to determine which cases its users are handling and which cases are still assigned to the administrator (super user).
Note for agents: new cases taken on by your firm will always default to the administrator as the case contact therefore the administrator needs to delegate them to a member user via the delegate case contact screen.
3) Search for Proceedings case screen
The label ‘IP Number’ has been updated to ‘Related Trade mark or Design Case’ to make it clearer that you can search by entering a trade mark or design case number that the proceeding relates to as well as by the proceedings case number.
Source: www.iponz.govt.nz
May 02, 2012 (Newsletter Issue 7/12)New Practice in Trademark ProceedingsThe United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN) relating to the submission of survey and expert witness evidence in UKIPO trade mark proceedings:
This practice notice gives notice that survey evidence and expert witness evidence can only be adduced into trade mark proceedings before the Intellectual Property Office with the permission of the hearing officer. It sets out the criteria which will need to be satisfied for such evidence to be adduced and the nature of that evidence.
The new TPN will be in force on July 16,2012.
For more information, please click here
Source: www.ipo.gov.uk May 02, 2012 (Newsletter Issue 7/12)
New IP Office and Procedures
The Afghanistan Government announced that the Trademark Registration Department has been relocated from the Commercial Court to the newly formed Intellectual Property Office (IPO) within the Ministry of Commerce and Industry as of April 4, 2012.
The opening of the new Intellectual Property Office (IPO) is expected to be on May 12, 2012.
In the meantime, the IPO is planning to unofficially receive applications and once the office becomes operational it will start giving formal application numbers.
The IPO will enforce the Trademark Law No. 995 dated September 1, 2009 and the new Rules and Regulations which will be finalized and approved by the Afghan Parliament.
In line with this change, some amendments have been made to the requirements and procedures for trademark registration, these changes include:
- Application shall undergo an examination before acceptance; the time frame needed for completing the examination is 15 working days as of the application date.
- The priority will be allowed based on the reciprocity principle.
- The time frame for registration is three (3) months as of the application date.
- The registration will be given only for all the goods/ services falling in the class(s) in which the registration is sought for, and there is no provision to apply for limited goods/ services.
- Applications can be filed with a copy of legalized Power of Attorney; meanwhile, the original document duly legalized and attested by the local Ministry of Foreign Affairs should be submitted at the time of obtaining the registration certificate.
- All the documents submitted should be accompanied with certified local language translations.
- In accordance with the new system, the official fees will be modified as well. The new fees will shortly be approved by the Afghan Parliament and applied on the applications filed before at the Commercial Court, but not yet completed the procedures.
More information will follow.
Source: www.agip.com
Apr 17, 2012 (Newsletter Issue 6/12)Sound Marks Now RegistrableThe Canadian Intellectual Property Office announced in its Practice Notice dated March 28, 2012, that they are accepting sound-based trademark applications. Previously, CIPO took the position that sounds could not be trademarked.
The application for the registration of a trade-mark consisting of a sound should:
1) State that the application is for the registration of a sound mark;
2) Contain a drawing that graphically represents the sound;
3) contain a description of the sound;
4) Contain an electronic recording of the sound.
Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.
Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of the Trade-Marks Act.
New applications for sound marks may only be submitted by way of a paper application, and not through CIPO's online filing system. For instance, the Office can only accept a recording of the sound in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD. Other types of recording media and references to a hyperlink or a streaming location cannot be accepted.
Source: Joli-Coeur Lacasse Avocats, Canada Apr 17, 2012 (Newsletter Issue 6/12)Patent Authority Begins Examining PCT ApplicationsOn April 4 it was announced that beginning June 1, 2012, Israeli applicants for PCT applications will be able to designate the Israel Patent Authority as an International Search and Examination Authority (ISEA).
The World Intellectual Property Organization (WIPO) decided to recognize the Israel Patent Authority as an ISEA in 2009. Since then significant preparations to implement this decision have been in progress. These include hiring additional patent examiners, training them to examine in accordance with PCT requirements, upgrading the computer and communications systems, and enacting the necessary legislation.
Official fees for performing search and examination have not been announced by the Patent Authority but they are expected to be lower than those presently paid by Israeli applicants to either the United States Patent & Trademark Office or the European Patent Office.
At first, the designation of the Israel Patent Authority as the ISEA in an international application will be available only to Israeli applicants. After an initial period it will also become available to applicants from other countries, subject to appropriate bilateral agreements.
Source: JMB Davis Ben-David, Israel Apr 17, 2012 (Newsletter Issue 6/12)Revision of the Trademark PracticeThe Japanese Patent Office has revised the domestic rule for judging the similarity of goods and services according to the 10th edition of the Nice Classification.
Some example of the revision of the judgement of similarity of goods can be seen here
Source: Shiga International Patent Office, Japan Apr 17, 2012 (Newsletter Issue 6/12)Practice Guidelines ChangedThe Intellectual Property Office of New Zealand (IPONZ) announced that its practice guidelines have been updated to reflect changes introduced by section 4 of the Trade Marks Amendment Act 2012.
The changes concerns
- Practice Guideline 02a Examination of trade mark applications - 4.3 Abandonment
- Practice Guideline 10a Overcoming a citation – 7.4 Abandonment of the cited mark
For further information, please click here
Source: www.iponz.govt.nz Apr 17, 2012 (Newsletter Issue 6/12)
Change of Address of UKIPO
The Intellectual Property Office London will be located at a new address as of May 21, 2012.
Normal business will be unaffected but any filing of documents after 11.59 p.m., May 20, 2012 should be at the new address:
1st Floor
4 Abbey Orchard Street
London, SW1P 2HT
There will be no change to the telephone numbers for the office.
Source: www.ipo.gov.uk
Apr 17, 2012 (Newsletter Issue 6/12)
New Trade Name Law
The new Trade Name Law (Law no. 18 of 2012) has been recently issued in Bahrain. This Law was drafted back in February 2011. The salient features of Law no. 18 of 2012 are as follows:
- The new trade name shall be new and innovative.
- The new trade name shall not be identical or similar to a well-known mark nor to any other mark.
- The new trade name shall not include any political, military or religious content.
- The new trade name shall not refer to any regional, Arab or international organization.
- The use of the new trade name shall not create any confusion with other names of company owners or product distributors.
Source: www.sabaip.com
Apr 17, 2012 (Newsletter Issue 6/12)New Local TM Registration System The Trademarks Act 2003 (Vanuatu) came into force in Vanuatu on February 8, 2011 after its publication in the Official Gazette in Vanuatu. No supporting regulations were passed to support that legislation, and until December 2011, the trade marks laws in Vanuatu was unclear.
On December 1, 2011, a new Registrar was appointed and the new law became effective. Since then, the Vanuatu Intellectual Property Office has been established within the Ministry of Trade, Tourism, and Industry, and more supporting regulations have been passed. New filings and recordals are now being accepted at the new Ministry.
The new legislation transforms the trade mark registration system from a re-registration system (based on registrations achieved in any member state of the European Union) to a local registration system.
Some highlights of the new registration system are:
- Trade mark applications can also claim convention priority from convention countries declared by regulation. A list of countries that fall within the definition of “convention country” is yet to be declared at this stage.
- Trade mark applications can cover multiple classes
- Applicants must have a local address for service
- There is a transitional period during which applications, notices or requests that were made in accordance with the old Act and were pending immediately before the commencement of the new Act are considered to have been filed in accordance with the new Act.
- The Act introduces examination (absolute and relative) provisions, acceptance, opposition, and registration provisions
- The Act allows applicants to file for a trademark registration on the basis of intention to use and for goods, services or both.
- The grace period for renewals is three months.
The Act also confirms that all registrations achieved under the Registration of EU Trade Marks [Cap. 81] will still be considered valid registrations under the new Act.
Source: A J Park, New Zealand Apr 17, 2012 (Newsletter Issue 6/12)
New IP Court
The Ordinance no. 84/2012, of March 29, 2012, has installed the First Chamber of the Intellectual Property Court, constituted by one judge.
This Court has initiated its functions on March 30, 2012. However, legal proceedings that have been initiated prior to the court installation will kept being judged by the courts in which they are currently pending.
The Law that created this Court predicts that a Second Chamber will be created once the workflow justifies it.
Source: www.marques.org
Mar 27, 2012 (Newsletter Issue 5/12)
Changes in Registration Procedures
The Ministry of Commerce, Industry and Tourism and the Ministry of Finance issued the Decree No. 4886 on December 23, 2011 which came into force on December 26, 2011. The decree modifies the structure of the Superintendency of Industry and Commerce, the authority in charge of the National Industrial Property System.
The following changes have been made:
- Reconsideration petitions against decisions issued by the Head of Distinctive Signs are eliminated. The only applicable remedy is an appeal, which must be decided by the Deputy Superintendent for Industrial Property.
- The Head of Distinctive Signs is authorized to arrange facilitation hearings between applicants for registration of distinctive signs and opposing third parties, to propose amendments that will allow applications to mature into registrations.
- The Superintendency of Industry and Commerce is authorized to question, under oath and in fulfilment of the formalities in the Civil Procedure Code, any person whose testimony is useful in clarifying the facts of the competition.
Furthermore the Superintendent of Industry and Commerce announced on January 31, 2011, that the Industrial Property Gazette will published twice a month in the future (i.e., every two weeks). Previously, the gazette was published once a month.
Source: www.inta.org; Cavelier Abogados, Bogota; Romero Raad Abogados, Bogota
Mar 27, 2012 (Newsletter Issue 5/12)
Guidelines for TM Applications
On February 21, 2012, the Administrative Guidelines DRPI-02-2012 was published in the Official Gazzette No. 37, which set forth when the PTO will officially record the filing date of an application.
To grant a date for the filing of applications, the PTO has to assign a time and date and will admit it to procedure, only if it complies with certain requisites. These include that it contains the identity of the applicant, the address or representative in the country, the mark itself (if it is a mixed mark, a copy must be attached), the products/services it pretends to protect and proof of payment.
Taking this into account, the priority date will be counted from the date which all the requisites are fulfilled, regardless of the date that the PTO receives the application. Furthermore, the Registry will only evaluate the application once the aforementioned minimum requisites are fulfilled and the filing date has been assigned. Finally, the priority period will be counted from this date for all legal purposes.
Failure to comply with these guidelines will result in the delay of granting the date of the filing of an application.
Source: Zurcher Lawyers, Costa Rica
Mar 27, 2012 (Newsletter Issue 5/12)Trademark Office Online ServicesThe Trademark Office of Saudi Arabia has recently launched an online service through the Ministry of Commerce official website www.mci.gov.sa
Interested parties can easily check the status of Saudi trademark applications by simply inserting the filing number in the designated field.
Source: SMAS IP, Saudi Arabia Mar 27, 2012 (Newsletter Issue 5/12)
Domain Registration Rules Liberalized
A new regulation of .pt domain registration came into force on March 1, 2012.
The liberalization of these rules will make the registration system of .pt domains simpler for users. The requirement to be based on a trademark registration will be removed. The new rules come fully into force on May 1, 2012.
It is provided a grace period of 60 days, starting on March 1, 2012 until May 1, 2012 during which the owner of IP rights in Portugal can proceed with the registration of the .pt domains based on those rights.
As a result of this liberalization priority IP rights in Portugal can easily registered as .pt domains by any entity.
Source: MarquesMarcas LDA., Portugal
Mar 27, 2012 (Newsletter Issue 5/12)Fee Payment Form RequiredCIPO reminds its clients to use the CIPO Fee Payment Form for all fee payments submitted to the office. This will ensure that the documents are processed efficiently and securely. The form can be downloaded here
CIPO also informs that the online trademark registration certificate is now accessible and available for repeated printing. For more information please click here
Source: www.cipo.ic.gc.ca Mar 27, 2012 (Newsletter Issue 5/12)
Official Fees Increased
The official fee system in trademark matters was recently amended. Under the new regulation, additional fees will be charged for trademark applications, registrations and renewal petitions designating over twenty goods/services in one class.
An additional fee of KRW 2,000.- (approx. EUR 1.40 ) will be incurred for each designated good/service in excess of twenty per one class. The amended regulation enters into force as of April 1, 2012.
Source: Kim & Chang Intellectual Property, Seoul, South Korea
Mar 27, 2012 (Newsletter Issue 5/12)Amendments to Trademark ActThe amendment to the Korean Trademark Act ("TMA") became effective as of March 15, 2012. Notable changes are as follows:
1. Protection of Sound and Scent Marks
Under the amended TMA, it is possible to protect sound or scent marks as long as they are capable of graphical representation (for example by way of a sign, character or figure).
2. Recognition of Certification Marks
It is also possible to apply for and obtain certification marks.
3. Abolishment of Recordation Requirement for Exclusive Licenses
Previously, an exclusive license was required to be recorded with KIPO to be effective. However, such requirement has been abolished as of March 15, 2012.
4. Statutory Damages for Trademark Infringement
The amended TMA implements a system of statutory damages, in which a trademark owner will be able to claim damages for up to KRW 50,000,000 instead of claiming actual damages.
For further information please also check the article of Kim & Chang Intellectual Property, South Korea here
Source: Kim & Chang Intellectual Property, Seoul, South Korea Mar 27, 2012 (Newsletter Issue 5/12)
Regulation for Registration of Pharma Products
The regulation for the registration, control and sanitary surveillance of pharmaceutical products, medical devices and sanitary products has been approved through Supreme Decree 016-2011-SA, published in official gazette El Peruano on July 27, 2011.
This norm establishes a new authorization regime that covers medical devices, pharmaceutical products, herbal (plant-based) health products, and dietary, galenic and biological products. It also includes pharmacovigillance and surveillance for medical devices (technovigillance), as well as inspection procedures for the sanitary authorities.
This decree encompasses all the aspects related to the products included in the Peruvian law for Pharmaceutical Products, Medical Devices and Sanitary Products (Law 29459). Its provisions will be implemented by the General Directorate of Medicinal Products, Supplies and Drugs Agency (DIGEMID), depending on the Peruvian Ministry of Health.
Law 29459 repealed Chapter III, part of Title II, of Law 26842 (General Law of Health).
This regulation also addresses the use of trademarks concerning pharmaceutical products.
The norm entered into force on January 27, 2012.
Source: Moeller IP Advisors, Buenos Aires, Argentina
Mar 27, 2012 (Newsletter Issue 5/12)
No Applications on Thursdays
The Trademark Registry in Iraq has appointed Thursday of every week for internal work only in order to review and examine the files and applications. The Trademark Office does not accept any applications or queries on Thursdays. Accordingly, all deadlines falling on a Thursday will be automatically extended to the next working day which would be the Sunday of that week since the official weekend in Iraq is Friday – Saturday.
Source: www.sabaip.com
Mar 27, 2012 (Newsletter Issue 5/12)
Requirement for Search Request
The Trademark Office issued a notification of requirement on the search criteria in terms of the reproduction of the device mark. In a search request 10 or less than 10 items of goods/service, identification of sub-classes and cross-class notes should be clearly filled out. The Trademark Office will not accept a search request in which only a class number or all class is indicated.
Source: Hanhow Intellectual Property Partners, China
Mar 06, 2012 (Newsletter Issue 4/12)
IP Legislation Amended
The law amending the Civil Code’s Part 4 entered into force on January 19, 2012.
The previous version of Part 4, titled “Author’s Rights”, was the main legal act on copyright and related rights in Turkmenistan, while the issues related to trademarks, patents and industrial designs were regulated by separate legal acts, which still remain in force.
The new Part 4 is titled “Legislation on Intellectual Property” and it outlines the legislative basics for the entire IP area, including copyright and related rights, database rights, patents, industrial designs, semiconductor topographies, selection achievements, trademarks and commercial names.
The new Part 4 also outlines the basics for IP licensing and assignment agreements, including the provisions on compulsory licensing and collective management of IP rights.
Finally, the new Part 4 provides legal remedies related to IP rights infringement. In particular, the new legislation clearly indicates the types of claims that the IP rights owner can file before the court.
In view of the replacement of the old Part 4 of the Civil Code, the Turkmenistan parliament adopted a separate copyright and related rights law, which entered into force on January 20, 2012.
Source: PETOŠEVIĆ Client Service Office, Belgium
Mar 06, 2012 (Newsletter Issue 4/12)Official Fees IncreasedThe Intellectual Property Office of Jamaica has increased its official fees effective from March 1, 2012.
To access the amended official fees, please click here
Source: Livingston Alexander & Levy, Jamaica Mar 06, 2012 (Newsletter Issue 4/12)National TM Applications Published for OppositionOn January 17, the Kosovo Intellectual Property Office (IPO) issued its seventh Official Bulletin, the first one to include national trademark applications published for opposition, under the provisions of the new trademark law of September 2011.
This Bulletin also includes the Serbian trademarks re-filed in Kosovo.
The previous six Bulletins included the Serbian trademark re-registrations only.
Apart from the Serbian re-registrations, during the one-year revalidation period that started on November 19, 2007, when the Kosovo IPO opened, it was also possible to re-file the pending Serbian trademarks. These trademarks will be treated in the same manner as the national trademark applications, while the Serbian priority will be kept. Thus, these trademarks will also be subject to opposition.
An opposition notice may be filed with the Kosovo IPO within a period of three months as of the publication date.
To access the seventh Official Bulletin, please click here
Source: SDP KOSOVE, Kosovo Mar 06, 2012 (Newsletter Issue 4/12)
Official Warning
The United States Patent and Trademark Office (USPTO) has issued an official warning.
One or more private companies not affiliated with the USPTO but using a name which appears to be "official" or somehow related to the USPTO or the United States Government has been directly contacting trademark owners around the world.
These companies offer to provide (for a fee) (1) legal services, (2) trademark monitoring services, (3) recording trademarks with U.S. Customs and Border Protection, and (4) to “register” the marks in the company’s own private registry. The companies may appear to be using official government documents and they request payments. They may display your trademark and its serial number or registration number, or refer to a section of the U.S. Code or other government agencies. They may appear to be warning you that your trademark registration is going to expire.
The USPTO does not send any solicitations for payment of fees. All official USPTO correspondence will be from United States Patent and Trademark Office in Alexandria, Virginia. If it comes by e-mail, it will be from the domain “uspto.gov.” It is rare for the USPTO to contact a trademark owner represented by an attorney. Please read all such correspondence very carefully. If you have any doubts about correspondence you receive concerning your trademark, please do not send any payment without first asking us whether it is legitimate.
Misleading correspondence can be forwarded to the USPTO, at TMFeedback@uspto.go, subject=solicitations. When doing so, please let the USPTO know if you thought the letter was an official communication and whether you mistakenly paid any fees.
Source: Arnstein & Lehr LLP, USA
Mar 06, 2012 (Newsletter Issue 4/12)
Electronic System for IP Rights Registration
Azerbaijan has formed a special group on creation of electronic system for registration of intellectual property rights. The work will be implemented at the expense of 4.2 million USD (3.2 million EUR) grant provided by the Korean government for 2-year project realization.
On October 11, 2011 the State Committee on Standardization, Metrology and Patents of Azerbaijan signed a grant agreement with the Korean Foreign Affairs and Trade Ministry on automation of intellectual property rights registration. The agreement is aimed at securing the effictive system of IP rights management, establishing a digital library and information system, training specialists and providing the stable intellectual rights registration system in Azerbaijan.
Source: Mikhailyuk, Sorokolat and partners, Ukraine
Mar 06, 2012 (Newsletter Issue 4/12)
Accession to the Geneva Act
On December 21, 2011 the Republic of Tajikistan deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The Geneva Act will take effect in Tajikistan on March 21, 2012.
The accession to this Agreement provides the owner of an industrial design with the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.
The Hague System simplifies the management of an industrial design registration, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO.
Source: www.wipo.int, Mikhailyuk, Sorokolat and partners, Ukraine
Mar 06, 2012 (Newsletter Issue 4/12)
New Trademark Bill Approved
A Draft Trade Mark Bill was approved by the Cabinet in Thailand on November 22, 2011, and the approved version was submitted to the Parliament for its final consideration and approval. It is expected to come into force in June 2012.
The Bill contains several significant points, which the Department of Intellectual Property believes will expand the scope of trade mark protection in Thailand, and accelerate and facilitate the registration process, and provide for more suitable fees for registration.
Under the Bill, “scent and sound” have been included in the definition of the term "mark" in order to extend the scope of protection to these non-traditional trade mark forms.
The Bill also provides clearer and more specific criteria for the purpose of determining whether a mark is distinctive. A distinctive status is ascribed to an invented word, invented number, or invented character. They can therefore be registered as trademarks.
The Bill also provides that a shape mark has a distinctive status, if the shape of the mark does not indicate the nature of the goods, or obtain technical results, or give substantial value to the goods.
Moreover, the Bill provides that if a trade mark is not inherently distinctive, as provided by law, it can acquire distinctive status by way of acquiring a secondary meaning - that is, by proving that the mark has been used in association with the applicant's goods or services in a commercial sense, and through such usage, has become well known in Thailand. The trade mark will thereby become distinctive.
Source: Siam Premier International Law Office Limited, Thailand on www.aippi.org
Feb 21, 2012 (Newsletter Issue 3/12)
New Business Names Registration Service
IP Australia announced that States, Territories and the Australian Government are going to introduce a new National Business Names Registration Service.
The new Registration Service will replace the current state/territory services, so that businesses only need to register their name with a single register nationally. The new service will be expected on May 28, 2012.
The new service will be managed by the Australian Securities and Investments Commission (ASIC).
Source: www.ipaustralia.gov.au
Feb 21, 2012 (Newsletter Issue 3/12)List of INNs PublishedThe Indian Controller General of Patents, Designs and Trade Marks (CGPDTM) has published the list of International Non-Proprietary Names (INNs) as declared by the World Health Organization (WHO).
More than pharmaceutical substances are mentioned as INNs in the said list. The Trademarks Act, Section 13 provides that international non-proprietary names declared by WHO or deceptively similar names shall not be registered as trademarks. As a high number of Indian applications has been filed in Class 5 (for goods relating to medicinal, pharmaceuticals, veterinary instruments/ apparatus, etc.), the list is expected to help the agents and applicants to assess their application prior to filing for trademark registration and to obviate expensive litigation dispute later on.
It is yet to be seen whether already registered marks, like Ofloxacin, Lactulose or Retinol, that are mentioned as INNs in the aforementioned list will be canceled suo moto by the Registry.
To access the list, please click here
Source: S. S. Rana & Co., New Delhi, India,
Chadha & Chadha, IP, New Delhi, India Feb 21, 2012 (Newsletter Issue 3/12)
Industrial Design Regulation Updated
The Malaysian Intellectual Property Corporation (MyIPO) has introduced some changes to the Industrial Design Regulations, effective on February 15, 2012.
Changes are:
1) Electronic filing of design applications and other documents throughout the prosecution of a design application with MyIPO are allowed. A document which is electronically filed is deemed to be effected at the time the document is accepted by the electronic filing system.
2) Increase of official fees, ranging between 30-50% for all stages of the prosecution process.
3) One copy of the representation of the design is now needed for the filing process. Previously 6 copies were needed.
4) While previously a Power of Attorney (Form ID 10) was needed for each individual application, a Letter of Authority has been introduced now, which will allow the agent to sign the foirm ID 10 for a number of design applications. The Letter of Authority will be needed at the filing stage to secure the finling date and application number. If the original letter cannot be obtained in sufficient time, a copy of the letter will be accepted by MyIPO, with the condition that the original will soon follow.
Source: KASS International Sdn Bhd, Malaysia
Feb 21, 2012 (Newsletter Issue 3/12)Official Fees AmendedThe Irish Patents Office has amended a number of changes to the fees of Trademarks, Patens and Desgins effective on February 1, 2012.
It introduced a fee of EUR 50 for the registration of a series of trademarks in a single registration, for each trademark in excess of two trademarks contained in the application.
For more information, please click here
Source: www.patentsoffice.ie Feb 21, 2012 (Newsletter Issue 3/12)ISO Code for South SudanThe country code "SS" has been assigned for South Sudan announced by the newsletter of the ISO 3166 Maintenance Agency. To access the notice, please click here
Source: www.iso.org Feb 21, 2012 (Newsletter Issue 3/12)New Case Management System OnlineThe Intellectual Property Office of New Zealand (IPONZ) announced that its new case management system for trade marks and designs is now online.
Key features of the new system are:
- Receive all correspondence electronically - no more paper.
- Manage your IP applications from your personal IPONZ inbox – a central point.
- Update and maintain your own contact details.
- View progress of your case/s online.
- Create your own subscription to receive notifications of changes about specifies cases or class and specification.
- Manage and view your proceeding cases online.
For more information, please click here
Source: www.iponz.govt.nz Feb 21, 2012 (Newsletter Issue 3/12)
Requirement for Local Agent in Cayman Islands Postponed
Although the new Patents and Trade Marks Law, 2011, came into force on December 7, 2011, the Government has now passed the Patents and Trade Marks (Transitional Provision) Regulations which provide that the date for implementation of the requirement to use a local registered agent will be postponed until March 31, 2012.
The Registry will cease to accept instructions from overseas agents or proprietors of patents and trade marks on April 1, 2012. Please see newsletter issue 1/12 for more information on the new law.
The reason for this short postponement is that the regulations which make provision for the application process for registered agents, namely the Patents and Trade Marks Regulations, 2012, (“the Regulations”) were just recently passed on February 3, 2012, some time after the implementation of the Law.
Source: Appleby Intellectual Property, UK
Feb 07, 2012 (Newsletter Issue 2/12)Requirements for Legalization of Documents ChangedThe Omani Ministry of Foreign Affairs has issued a notification declaring the accession of Oman to the Apostille Convention (Hague Convention Abolishing the Requirements of Legalization of Foreign Public Documents) by virtue of Sultanate Decree No. 47/2009. The Convention has been effective in Oman as of January 30, 2012.
As such, Oman will start accepting Apostille legalization of documents related to trademarks, patents, industrial designs and all other IP related matters. There will be no need for further legalization up to the Omani Consulate as long as the applicant’s home country is a member of the Apostille Convention.
Source: JAH & Co. IP , Doha, Qatar Feb 07, 2012 (Newsletter Issue 2/12)Customs Recordal Soon ImplementedThe provisions of Article 7 of the new Law on Intellectual Property Rights Border Measures (Law No. 17 of 2011) came into force in January 2011 and trademarks customs recordal will soon be implemented. Article 7 of the new Law stipulates the following:
Article (7): “The right holder may submit an application with the Department requesting registration of all data related to its rights, and its address in the State, in a registry specific for this purpose at the Department, and the Minister will issue a decision on the registration procedures and fees upon a proposal by the Director General of the Department”.
By way of elaboration on the above, the rights holders are now allowed to "record" all relevant information related to their marks. This will definitely mean that, with a recordation system in place, Customs will be allowed to adopt an ex-officio border system, whereby they can immediately target, intercept and confiscate shipments of infringing goods and thus avoiding the delays inherently involved in seeking judicial action. Therefore, products suspected of being counterfeit will be suspended and the rights owner as well as the importer will be immediately notified.
In this perspective it should be noted that the documents and other relevant requirements needed for the recordal and the recordal period have not been specified yet.
Please note that Morocco, Sudan, Tunisia and the UAE (Dubai, Sharjah and Ras Al Khaimah) are offering customs recordal.
Source: JAH & Co. IP , Doha, Qatar
Feb 07, 2012 (Newsletter Issue 2/12)
TM Application Simplified
The Venezuelan PTO issued a notice abolishing the requirement to physically file a hard copy of a trademark application. As of January 2, 2012, the PTO will allow applicants to file trademark applications along with a copy of the search payment receipt. It will no longer be necessary to enclose the search results as this requirement has been abolished.
The filing and review process shall be made more efficient with these changes. It shall also reduce paper waste.
Source: Bentata Abogados, Caracas, Venezuela
Feb 07, 2012 (Newsletter Issue 2/12)Accession to Vienna AgreementThe Government of Montenegro deposited its instrument of accession to the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks on December 9, 2011.
The said Agreement will enter into force on March 9, 2012.
For more information, please click here.
Source: WIPO Feb 07, 2012 (Newsletter Issue 2/12)
New Dispute Resolution Procedure
Singapore signed a Memorandum of Understanding (MOU) with WIPO establishing a dispute resolution procedure for IP disputes filed with IPOS on September 28, 2011. The new resolution allows IP disputes filed with IPOS to be mediated using WIPO rules. It took effect on January 3, 2012.
Source: Source: hslegal LLP, Singapore
Feb 07, 2012 (Newsletter Issue 2/12)
Accelerated Examination of TM Applications
The Administrative Instruction explains the procedure and the grounds for requesting the accelerated examination which was introduced by Kosovo’s new Law on Trademarks. The Ministry of Trade and Industry (MTI) approved the Administrative Instruction on January 12, 2012 and entered into force on the same date.
The accelerated examination is only available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:
- Copy of the trademark application as filed;
- Documents evidencing that a civil or a customs action was duly initiated;
- Documents evidencing trademark rights and the alleged infringement of such rights;
- Proof of payment of the official EUR 50 (USD 63) fee per trademark, regardless of the number of classes.
The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IPO will decide to grant or reject the accelerated examination request within 15 days from the filing date. The examination is to be performed under the provisions of the Law on Trademarks.
Source: SDP KOSOVE, Kosovo
Feb 07, 2012 (Newsletter Issue 2/12)Accession to Vienna AgreementThe Government of Bosnia and Herzegovina has deposited its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.
The said Agreement will enter into force on April 19, 2012.
For more information, please click here.
Source: WIPO Feb 07, 2012 (Newsletter Issue 2/12)IP Court to Be EstablishedOn November 29, 2011, the Federation Council (upper chamber of the Federal Assembly ‐ Russian parliamentary body) approved the Federal constitutional law forming a court on intellectual property, sometimes refered to as the "patent court".
Under the new law drafted by the Supreme Commercial Court, the patent court should start no later than February 1, 2013. The law defines the court as a specialized commercial court that will consider disputes involving the protection of infringed or contested rights to intellectual property as a first-instance and cassation court. For a time it will be the only patent court in Russia – establishment of the lower courts is yet planned.
Currently all disputes of this sort fall under jurisdiction of the courts of general jurisdiction and the state arbitration courts, depending on the legal status of the litigants. All the cases pending before the courts of general jurisdiction at the time when the patent court begins to work must still be completed in the very same court that initiated the process.
Source: Patentica LLP, Russian Federation Feb 07, 2012 (Newsletter Issue 2/12)Accession to TLTThe World Intellectual Property Organization (WIPO) has informed that the Government of the Republic of Colombia last week deposited its instrument of accession to the Trademark Law Treaty (TLT). The treaty enters into force for Colombia on April 13, 2012.
The aim of the TLT is to streamline national and regional trademark registration procedures. This is achieved through the simplification and harmonization of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable.
Colombia's accession to the TLT will bring the number of active participants in the TLT to around 50. The region's participation in the TLT is growing: Colombia joins Costa Rica, the Dominican Republic, El Salvador, Honduras, Nicaragua and Peru.
For more information on the notification, please click here
Source: www.wipo.int and IP Tango Feb 07, 2012 (Newsletter Issue 2/12)Accession to WIPO ConventionThe Government of Vanuatu has deposited its instrument of accession to the Convention establishing the World Intellectual Property Organization (WIPO Convention), signed at Stockholm on July 14, 1967, and as amended on September 28, 1979. The WIPO Convention becomes effective on March 2, 2012.
For more information on the notification, please click here
Source: www.wipo.int
Jan 23, 2012 (Newsletter Issue 1/12)New Patents and TM Law in Cayman IslandsThe new Patents and Trade Marks Law 2011 took effect in the Cayman Islands on December 7, 2011.
Following amendments can be reported:
- A registered agent is now required: Proprietors of patents and trade marks can now only transact business with the Registry of Patents and Trade Marks in the Cayman Islands via a registered agent who must be resident in the Cayman Islands.
- Certificates of Good Standing will now be available: The new legislation provides that the Registry, upon request by a registered agent, may issue a certificate of good standing to evidence that a patent or trade mark has been recorded in the Cayman Islands and that all applicable fees have been paid.
- Annual fees and penalty fees: The new legislation provides that if the annual fee is not paid by March 31 of the relevant year, the right protected will be held in abeyance from April 1 until the annual fee and penalty fee is paid. A penalty is payable when the annual fee is paid after March 31. It should also be noted that in the event that an annual fee and the applicable penalty fee is not paid for more than twelve months, the patent or trade mark in question may be cancelled by the Registrar.
- Renewal of expired patents or trade marks: Proprietors should also be aware that whilst their registered agent may apply for an expired patent or trade mark to be renewed, a renewal application which is made more than two months after expiry will attract a late renewal fee in addition to the renewal fee and any outstanding annual and penalty fees.
- Abandoned patents or trade marks: The proprietors shall inform the Registry, via their registered agent, if a patent or trade mark has been abandoned when the Registry will record the protected right as inactive. Upon payment of a re-activation fee and annual fees the protected right may be revived.
To access the new law, please click here. For further information please also check the article of Mr. Moses from Appleby Intellectual Property here
Source: Appleby Intellectual Property, UK
Further information on Cayman Islands see below (Related Territories). Jan 23, 2012 (Newsletter Issue 1/12)
TM Registration in Southern Sudan
The Ministry of Justice in Southern Sudan has issued directives to officials at the Trademark Office that they adopt certain procedures known as “Reservation of a Trademark” until issuance of a trademark law. The said procedures could be summarized as follows:
1) A written application is submitted to the Registrar indicating the trademark sought to be protected, as well as prints of the mark in question.
2) The Registrar will conduct search in the data base of the Registry to ascertain whether the mark is registered or not.
3) If the mark is not registered, it will be “reserved” in applicant’s name, and no other person will be allowed to use the said mark.
Please note that no official fees have been fixed yet for such procedure.
Source: SMAS Intellectual Property, Sudan
Jan 23, 2012 (Newsletter Issue 1/12)TM Status Document Retrieval The USPTO introduced a new system, Trademark Status and Document Retrieval (TSDR 1.0) in December 2011.
The new system TSDR 1.0 redefines the way Trademark status data and all documents will be displayed to the public. It reengineers the existing functionality that the current systems TARR and TDR had provided and adds new features, providing access to one place for viewing, printing, and downloading snapshots of the data the USPTO stores about a trademark application or registration.
For more information on the new system, please click here Jan 23, 2012 (Newsletter Issue 1/12)
TMs Published for Opposition
The Montenegro Intellectual Property Office (IPO) issued its seventh Official Gazette on December 20, 2011. It is the first one that includes national trademark applications published for opposition, under the provisions of the new trademark law of December 2010.
The new trademark law abolished the previous practice of substantive examination on relative grounds and introduced the opposition proceedings. A trademark application is now examined on absolute grounds only and if it meets the requirements for registration, it is published in the Official Gazette. Third parties have 90 days from the date of publication to file a written opposition.
Source: PETOSEVIC Montenegro and Intellectual Property Office of Montenegro
Jan 23, 2012 (Newsletter Issue 1/12)Info Required on TM ApplicationsThe Controller General of Patents Design and Trademarks (CGPDTM) has issued a public notice regarding the recurrent deficiencies in the trademark applications received by the Registry.
The notice specifically mentions that trademark applications would not be processed unless following information is provided:
- The actual description of goods/services in which the trademark is proposed to be used/has been used;
- Names of proprietors in case of proprietorship firm, all partners in case of partnership firm, managing trustee in case of Trust and person representing the society in case of Society;
- The actual date, month and the year to be given in case of “User”
- Translation/transliteration of the trademark in case of Non-English / Hindi characters appearing in the mark;
- The marks should also be clearly visible on the application.
Applicants/Agents are also directed to refrain from using terms like "all goods/ services", "etc", "all other goods/ services in the application.
To access the public notice, please click here
Source: S. S. Rana & Co., New Delhi, India Jan 23, 2012 (Newsletter Issue 1/12)E-Tracking of ApplicationsThe Brazilian Patent and Trademark Office (INPI) announced a new software system to speed up and simplify the processing of trademark applications made in paper.
Applicants can track the status of their application ectronically through the entire procedure. Any formal requirements will be published in the Journal of Industrial Property (Revista da Propriedade Industrial), available on INPI’s Portal. The deadline to comply with those formal requirements is five days. If all requirements are fulfilled, the request goes to the technical examination.
For more information, please click hereSource: www.inpi.gov.br Jan 23, 2012 (Newsletter Issue 1/12)New Case Management SystemThe Intellectual Property Office of New Zealand (IPONZ) is going to introduce its new case management system for trade marks and designs on February 13, 2012. The new system makes it easy to search, apply for, and maintain the firm’s IP and proceedings cases in a single place, through a simple user interface.
IPONZ has established a pre-registration period for current users which provides an opportunity to create a logon and link to existing records that have been migrated to the new system. Pre-registration will reduce any administrative delays in processing transactions and ensure a smooth transition.
The pre-registration period ends on 31 January 2012. IPONZ strongly encourages to pre-register.
Furthermore, the office offers a series of free workshop style training sessions on how to use the new case management system for trade marks and designs. To access the session schedule, please click hereSource: www.iponz.govt.nz Jan 23, 2012 (Newsletter Issue 1/12)
Opt Out of Community Search System
The Oficina Española de Marcas y Patentes (OEPM) has opted out of the community search system effective as of January 1, 2012.
CTM applications with national search requests and a reception date in 2012 with will not be sent to the Spanish Office and the applicable fee will belowered to €120 from January 1, 2012 onwards.
Source: www.oami.europa.eu
Jan 23, 2012 (Newsletter Issue 1/12)
Renewal Period Amended
Recently, the Patent and Trademark Office of Argentina (INPI) published Resolution N° M-1735 in the official Gazette. It establishes a new way of computing the trademarks renewal period.
In the past INPI calculated the term of validity of the registration as from the granting date of the renewal, which in the practice represents a period of time from the expiration of the registration till the issuance of the organism's renewal resolution.
As from January 1, 2012, the trademark's renewal term will be counted from the date of expiration of the trademark duration. The renewals will be counted automatically, for identical and consecutive periods, no matter the time that takes the renewal to be granted.
Source: Moeller IP Advisors, Argentina
Jan 23, 2012 (Newsletter Issue 1/12)
Translations to be Certified
In an Official Notification dated August 1, 2011, the Patent and Trademark Office of Argentina (INPI) reminded that after the filing of any document in a foreign language its Spanish translation by an Argentine sworn translator has to be filed. Consequently, the Spanish translation of the priority certificates must be certified by an Argentine sworn translator.
Source: Moeller IP Advisors, Argentina
Jan 23, 2012 (Newsletter Issue 1/12)
Accession to Madrid Protocol Expected
After a long process, this July, the Colombian Congress approved the adoption of the Madrid Protocol by Law No. 1455/2011, which was possible thanks to the strong support of multiple local organizations and particularly the Colombian PTO.
The Protocol won't immediately enter in force, as it still must go through other legislative procedures, which will culminate with the deposit of the instrument of accession with WIPO. Approximately three months after this later event, the Madrid Protocol will be available in the first South American country and is therefore expected soon.
Source: Moeller IP Advisors
Jan 23, 2012 (Newsletter Issue 1/12)To Join the EUCroatia applied for the European Union membership and signed the Accession Treaty on December 9, 2011 to become a member. Subject to the Treaty's ratification by all Member States and Croatia, the country will become the 28th Member State of the European Union on July 1, 2013. A referendum on the EU accession was held in Croatia on 22 January 2012. It passed with more than 60 percent votes cast in support of the accession.
Croatia’s membership of the European Union brings with it implications for the Community trade mark and designs systems and the Treaty outlines that all CTMs and RCDs registered in Member States before the date of accession shall be extended to the territory of Croatia on the day of accession.
For more information please click here Dec 05, 2011 (Newsletter Issue 14/11)Official Fees to Increase in 2012The Brazilian Patent and Trademark Office (INPI) annouced an average increase of 18.5 % in its official fees including the trademark application fees effective from January 2012.
The official application fees per trademark will be BRL 475.00 (approx. EUR 190.00) in case of paper filing, respectively BRL 355.00 (approx. EUR 143.00) per trademark when filed electronically.
To access the schedule of fees, please click here
Source: www.inpi.gov.br and M.J. Zanon, IP Lawyer, Brazil Dec 01, 2011 (Newsletter Issue 14/11)
Trademark Application Modernised
The Swedish Trademark Office introduced an updated version of the online service Swedish Trademark Application on December 01, 2011.
Following improvements have been done:
- Possibility to sign the application with e-ID.
- Extended payment options through direct payment in the bank. Large business customers receive the possibility to pay via PRV Deposit Account.
- Introduction of a "shopping cart", to pay for multiple applications simultaneously and the possibility to reuse the same classification and data from a recently completed application.
- Use of the database EuroClass for the classification of goods and services, which was developed in cooperation with the Office for Harmonization in the Internal Market (OHIM). Among other things, this means that the number of searchable goods and services has increased from about 9 000 to about 77 000.
Source: www.prv.se
Dec 01, 2011 (Newsletter Issue 14/11)
Country Name Changed
The official country name of the former Libyan Arab Republic (also known as the Libyan Arab Jamahiriya) has been changed to 'Libya'. The International Organization for Standardization (ISO) code for Libya remains as 'LY'.
Source: Lysaght & Co., Jersey, Channel Islands
Dec 01, 2011 (Newsletter Issue 14/11)Official Fees for Publishing IncreasedThe Yemeni Ministry of Industry and Trade has issued Ministerial Decision No. 246 of the year 2011 regarding the designation of the Trademark Gazette (AL-TIJARAH) as a means to disseminate business sector services related to Intellectual Property (IP) provided by the Ministry of Industry & Trade and the provision of fees for publication.
The decision endorsed by Yemeni Minister of Industry and Trade Eng. Hisham Sharaf Abdullah on November 2, 2011 and circulated on November 13, 2011 can be summarized as per the following:
- The publication upon acceptance and publication upon registration have been merged in one publication instead of two, and the official fees have also been merged.
- The size of the publication will be managed by the number of digits included in the list of goods of the application.
- A new size has been indicated for publication; that is 2/3 of a page which was not available before.
Source: JAH & Co. IP , Doha, Qatar Dec 01, 2011 (Newsletter Issue 14/11)Change of Practice in Class 35Although Turkish Patent Institute (Turkish PTO) accepts specifications for retail services with the reference to the goods or types of goods to which those services relate in international applications designating Turkey, it did not accept such specifications which provide details with regard to the goods or types of goods to which those services relate in local applications until 19th October 2011.
Before 19th October 2011, Turkish PTO used to amend all types of retail service specifications with the exact wording of the explanatory notes to class 35 of the NICE Classification, which is “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”.
The Turkish PTO has changed its practice with regard to retail services specifications with an announcement which was published in Official Gazette on 19th October 2011 and has gone into effect in the same day. The said announcement may be seen at the official website of the Gazette here
Now, specifications for retail services with the reference to the goods or types of goods to which those services relate are accepted in Turkey. In addition, the exact wording of the explanatory notes to class 35 for retail services also continue to be accepted in trademark applications.
Source: Abdurrahim Ayaz, Istanbul Patent & Trademark Consultancy, Ltd., Istanbul, Turkey Dec 01, 2011 (Newsletter Issue 14/11)
Legal Notices Electronically
The Congress of the Republic of Guatemala has enacted the Law Regulating Notifications by Electronic Means in the Judicial Organ. by the Decree 15-2011.
In all judicial and administrative proceedings before the Judiciary Offices, the parties and their attorneys may be served at the email address previously indicated. Both the parties and their attorneys may join the system voluntarily by filling their respective membership forms where they grant their consent to join the system.
Notifications made electronically have the same effect and validity as those made in accordance with procedural rules, except when a legal provision provides that the notification must be made in person. The Decree is effective since 19 October 2011.
Source: Lexincorp Central America, Guatemala, Guatemala
Dec 01, 2011 (Newsletter Issue 14/11)Change of Practice in Honest Concurrent UseThe Irish Patents Office has announced a change of practice regarding honest concurrent use which will come into effect on 1 December, 2011.
The Office has suspended its former practice of automatically refusing honest concurrent use based trademark applications where a subsequent opposition from the holder of the earlier trademark was received.
In the future, the Controller will consider each of these opposition cases based on various factors that are defined in the new procedure. The new procedure can be seen here here
Source: www.patentsoffice.ie Dec 01, 2011 (Newsletter Issue 14/11)
Adoption of 10th Edition of Nice Classification
The German Patent and Trademark Office (DPMA) announced that it will apply the 10th Edition of the Nice Classification as from 1 January 2012. Applications filed after the 9th Edition won’t be any longer acceptable as from 1 January 2012 and will be objected by DPMA.
Source: www.dpma.de
Dec 01, 2011 (Newsletter Issue 14/11)Going to Accede to Hague System and Madrid ProtocolTunisia has issued Resolution No. 77 regarding the accession to the Hague System for the International Registration of Industrial Designs and Resolution No. 78 of August 11, 2011 regarding its accession to Madrid Protocol for the International Registration of Trademarks. The two resolutions were published in the Official Gazette on August 16, 2011.
Accordingly, the Tunisian government will again submit the application for the membership of the Hague System and the Madrid protocol although it had withdrawn from the Madrid Agreement in 1988.
Source: AGIP and Cabinet Younsi, Tunisia Dec 01, 2011 (Newsletter Issue 14/11)
Serbian Trademarks Included in Search Reports
The search reports provided by Intellectual Property Office of Montenegro (IPO) include Serbian trademarks registered before the IPO of Serbia prior to May 28, 2008. Therefore, no additional search needs to be conducted before the Serbian IPO.
However, the report includes Serbian trademarks that may not be re-registered or filed for re-registration in Montenegro. No further information is provided by the Montenegrin IPO as to the status of those marks in Montenegro. Therefore, whereas some of those marks may be real obstacles if they were filed for re-registration in Montenegro, others may not become such an obstacle if their owners do not file for re-registration in Montenegro before December 16, 2011. The situation will be clear by the end of re-registration period.
Source: PETOSEVIC Montenegro
Dec 01, 2011 (Newsletter Issue 14/11)Most Creative Country in the WorldThe study by the Martin Prosperity Institute informs that Sweden is number one in the Top 25 overall Global Creativity Index rankings. The study shows that Sweden has immense talent, top-five technological progress and the tolerance to embrace them both. Each country is given a Global Creativity Index, GCI, which is based on Technology Rank, Talent Rank and Tolerance Rank. The study found that there is a great correlation between creativity and economic growth.
The Top 15 List includes;
1. Sweden, 2. USA, 3. Finland, 4. Denmark, 5. Australia, 6. New Zealand, 7. Canada, 8. Norway, 9. Singapore, 10. Netherlands, 11. Belgium, 12. Ireland, 13. United Kingdom, 14. Switzerland, 15. France
To access the study, please click here
Source: GROTH & CO KB, Sweden Dec 01, 2011 (Newsletter Issue 14/11)New Patent Reform Act AdoptedPresident Obama signed the America Invents Act on September 16, 2011. The introduction of the new patent system is a historical event and an adjustment to the rest of the world.
The new system creates a “first- inventor-to-file” system, replacing the current “first-to-invent” system. The new law will continue giving inventors in the U.S. a “Limited Inventor Grace Period” of 12 months with the possibility to be granted patent of an innovation which is already disclosed in the U.S.
Improvements of the Law:
The new law will consider foreign priorities, even if these are in other languages than English. This will allow filing of so-called Provisionals redundant. Also, it is introduced a Post-Grant Review within 9 months of grant.
The new system is expected to reduce the process time for applications despite that the number of applications has increased. However, this remains to be seen, especially as both the old law and the new law will exist parallel for at least 20 years. Thus, new patent applications filed prior to the adoption of the new law will to be included and handled under the old system, whilst new patent applications filed after the adoption of the new law will be encompassed and examined under the new patent system.
Source: United States Patent and Trademark Office, www.uspto.gov
GROTH & CO KB, Sweden Nov 08, 2011 (Newsletter Issue 13/11)
Adoption of 10th Edition of Nice Classification
The Intellectual Property Office of Singapore (IPOS) announced on September 16, 2011, that the 10th edition of the Nice Classification will come into effect on January 1, 2012.
The Registry will provide more information on the specific changes shortly. However, the Search & Pick and eTrademarks Search databases will be duly updated and the relevant changes will be captured once the 10th edition of the Nice Classification comes into force.
The 9th edition of the Nice Classification shall continue to apply to all applications filed before January 1, 2012. Applications filed on or after January 1, 2012 shall be filed in accordance with the 10th edition of the Nice Classification. For the avoidance of doubt, there will be no reclassification of goods and services for existing applications filed prior to January 1, 2012, after the 10th edition of the Nice Classification comes into force. The Registry will conduct cross class searches to ensure that relevant citations are captured.
Source: www.ipos.gov.sg, Allen & Gledhill LLP, Singapore
Nov 08, 2011 (Newsletter Issue 13/11)List of Missing Trademark FilesThe Iraqi Trademark Office has published on October 11, 2011 a declaration in connnection with the missing trademark files which were damaged in the war.
The declaration includes a schedule of the third group of the missing trademark files (No. 23000-34999). Owners of these trademarks should provide the Trademark Office through their trademark agents and legal attorneys with documents which prove that they are the legitimate owners of the same in order to preserve the legal protection of the said trademarks in Iraq.
The aforesaid declaration also stipulated that the requested documents should be submitted with the Trademark Office within six months from the date of the publication of the same; otherwise, registration of the said trademarks shall be considered as cancelled and never existed.
To access the declaration please click here
Source: JAH & Co. IP , Doha, Qatar Nov 08, 2011 (Newsletter Issue 13/11)
Trademark Office Resumes its Activities
The Libyan Trademark Office has resumed limited operations as many of the employees have resumed duty.
Source: NJQ & Associates
Nov 08, 2011 (Newsletter Issue 13/11)
Simply Signed PoA Now Accepted
The Sudanese Registrar has announced that with effect from the beginning of October 2011, a simply signed Power of Attorney is accepted instead of a legalized Power of Attorney for filing trademarks, designs, patents and renewals applications.
The deadline for filing the original documents is three months from the application date.
A legalized copy of the commercial register is, however, still required for new applications.
Source: NJQ & Associates
Nov 08, 2011 (Newsletter Issue 13/11)Official Fees Increase in DecemberThe Singapore's Intellectual Property Office has revised its fees upwards by an average of 10%, effective on December 1, 2011. The new official fees can be viewed here
Source: hslegal LLP, Singapore Nov 08, 2011 (Newsletter Issue 13/11)
New Trademark Regulation Enters into Force
A new regulation governing trademark application and registration procedures came into force in Montenegro on October 29, 2011. The new regulation replaced the former 2004 regulation, rendered in the former State Union of Serbia and Montenegro.
The new regulation determines the content of and the manner of running the trademark register and applications records. The regulation also prescribes the necessary content for all types of requests and decisions that may be rendered in connection with a trademark application and registration.
Source: PETOSEVIC Montenegro
Nov 08, 2011 (Newsletter Issue 13/11)Journal of Trademarks Available Electronically NowThe Intellectual Property Organization of Pakistan (IPO) has launched the first publication of Digital Journal of Trademarks at the Trademarks Registry in Karachi on October 20, 2011.
Accordingly, trademarks will be published faster and in colors while in the past they needed 12-18 months.
Last August, the Intellectual Property Organization of Pakistan (IPO) informed all the applicants, attorneys and General Public that Trademark Rules 2004 has been amended to give legal effect to the Digital Form of the Trademark Journal available on the website of IPO-Pakistan. To access the IPO's website, please here
Source: AGIP; Bharucha & Co., Pakistan Nov 08, 2011 (Newsletter Issue 13/11)E-Filing Soon AvailableThe Indian Trademark Office is planning to introduce online filing of documents in the coming months if the proposal of the Indian Government to amend the Indian Trade Mark Rules, 2002 will be accepted.
The amendments would enable
a) Trademark owners and attorneys to file a new trademark application, renewal, response to examination report, notice of opposition, other forms and other documents electronically.
Affidavits are exceptions which still need to be filed in paper.
Furthhermore, if a trademark owner without an authentication is filing documents electronically needs also to file the documents in paper (triplicate) with the trademark office within 15 days from the date of electronic filing.
b) The trademark office can communicate to the applicant or the attorney on record electronically. The date of the communication by the trade mark office is deemed to be the date of dispatch of the electronic communication duly authenticated. In the event of any delay in receipt of the communication by the trademark owner or the attorney, the amendment provides for such delay only, being condoned by the Registrar when a petition to condone the delay is filed with supporting evidence.
The notification was published in the gazette and is open to objections up to November 26, 2011 and can be accessed here
Source: Selvam & Selvam, India Nov 08, 2011 (Newsletter Issue 13/11)Validity of the PoA AmendedThe Saudi Arabian Trademark Directorate has issued a new directive declaring that as of November 27, 2011, the validity of the Power of Attorney is ten Hegira years which is equivalent to nine year and eight months according to the Gregorian Calendar and is calculated as from the date of the stamp of the Saudi Arabian Embassy abroad on the power of attorney.
The validity of the trademark registration in Saudi Arabia is ten Hegira years (equivalent to approximately nine years and eight months according to the Gregorian calendar) as from the filing date. As the renewal fees of a trademark registration can be paid during the last 12 Hegira months of the current protection period it will be possible to use the same power of attorney used for filing the application if the renewal instructions are received at the beginning if the lat year protection period to avoid executing a fresh power of attorney for renewal and unnecessary disbursements.
Source: JAH & Co. IP , Doha, Qatar Oct 25, 2011 (Newsletter Issue 12/11)IP Journal Available Electronically Now The Kenya Industrial Property Institute (KIPI) discontinued the printing of the hard copy of the Industrial Property Journal effective from 30th September 2011. In compliance with the provisions of the Industrial Property Act 2001, an electronic copy of the Industrial Property Journal (the “Journal”) will be availed to members of the public every month, free of charge.
To access the September Journal please click here
Source: Ndikimi & Company Advocates, Kenya Oct 25, 2011 (Newsletter Issue 12/10)
Official Fees to Increase in November
The Intellectual Property Office of Singapore (IPOS) will increase its official fees sometime in November 2011. This was announced at a recent dialogue with IPOS. The increase in official fees takes place to meet in the increase in IPOS’s operating costs. In most cases, official fees are expected to increase by about 10%.
Source: hslegal LLP, Singapore
Oct 25, 2011 (Newsletter Issue 12/11)Project Seniority ImplementedThe Portuguese Institute of the Industrial Property (INPI) has implemented the Project Seniority. This project aims to harmonize the seniority data between OHIM and National Offices and improve the data accuracy and customer satisfaction.
For more information about this project please click here Oct 25, 2011 (Newsletter Issue 12/11)
Term Extension to File Oppositions No Longer Accepted
The Ecuadorian Trademark Office has decided to eliminate the possibility of term extensions to file opposition (under Resolution No. 11-029 P-IEPI), in concordance with the Andean Community Regulations.
As from July 2011, the Ecuadorian Trademark Office has decided to eliminate exensions of terms to file oppositions against trademark applications, considering that there was a contradiction between the national and the community regulations.
The Decision 486 of the Andean Community does not include the possibility of requesting extensions of terms to file oppositions, against the Ecuadorian Trademark Law which accepts this exception.
In light of the above, the Ecuadorian Trademark Office has concluded that the community regulation must prevail on the national one. Therefore, extensions will no longer be granted in Ecuador to file oppositions.
Source: Moeller IP Advisors, Buenos Aires, Argentina
Oct 25, 2011 (Newsletter Issue 12/11)Legalization of Power of Attorney RequiredThe Saudi Trademarks Directorate announced that all new trademark applications should be accompanied with a copy of a legalized power of attorney provided that the original of same should also be submitted at a later stage after filing for verification, effective 27 November 2011. No new trademark applications will be accepted for filing without a legalized power of attorney as per the current practice. Also, the validity of the legalized powers of attorney will be ten years only.
Source: JAH & Co. IP , Doha, Qatar Oct 25, 2011 (Newsletter Issue 12/11)New Industrial Designs Implementing RegulationsThe implementing regulations related to Industrial Designs Law No. 28 of 2010 in Yemen have been issued under Ministerial Decision No. 212 of 2011 of October 3, 2011. The main amendments of this Law are as follows:
- Disclosure of the invention without the knowledge or consent of the inventor shall not be taken into consideration as relative novelty bar if it occurred within the 6-month period preceding the filing date or priority date of the patent application.
- Design applications are published in the Official Gazette upon acceptance. Oppositions may be filed within 90 days from publication date.
- The protection term is extended to 10 years from filing date, instead of 15 years as per the provisions of the previous law. Renewal is no longer possible. No provision for the payment of annuities.
Source: JAH & Co. IP, Doha, Qatar Oct 25, 2011 (Newsletter Issue 12/11)Requirement to Attend Hearings on Invalidation on Relative GroundsThe UK Intellectual Property Office (UKIPO) issued Tribunal Practice Notice (3/2011) which updated TPN (6/2009) concerning the requirement to attend hearings in relation to applications for invalidation on relative grounds.
The registrar does not consider that a mandatory hearing in every such invalidation case is necessary or even beneficial. The registrar will, accordingly, review each invalidation action based on relative grounds, and either direct attendance at a hearing under rule 62(2), or alternatively, suggest instead that a decision be taken from the papers only. In the latter case, the parties will nevertheless retain their right to be heard if they wish.
For more information please click here Oct 25, 2011 (Newsletter Issue 12/11)Report on Trade Mark IncentivesThe UK Intellectual Property Office (UKIPO) has commissioned the report 'Trade Mark Incentives'. It investigates the relationship between trade marking and business performance in terms of productivity, employment, wages and growth.
According to this study, positive linkages were found between trade marking and business performance, which ”indicate[s] that trade mark active firms are different in important and valuable ways from other firms. This should reassure policymakers, who design innovation policy to encourage domestic producers to compete on product quality and variety, not just cost and price, and to use trade marks to signal their innovations.”
To access the full report please click here Oct 01, 2011 (Newsletter Issue 11/11)TM Applications Soon Possible in KurdistanTrademark office of Iraqi Kurdistan at the Ministry of Industry and Trade (MIT) in Erbil will start accepting trademark applications for the Kurdistan region through its newly established Trademark Department, located at the building of the Ministry. It was reported that the Trademark Office of Erbil, Iraqi Kurdistan will start accepting trademark applications for the Kurdistan region. However, detailed information on the matter has yet to be revealed by the competent authorities until the time being as a meeting between the Officials at the two Trademarks Offices in Erbil and Baghdadis is contemplated by the end of coming November to agree on a unified mechanism for the registration process between them.
According to current practice the following two options are available for the protection of trademarks under the said jurisdiction.
1. If the trademark is filed in Iraq a letter from the Iraqi Trademarks Registrar should be addressed to the Trademarks Registrar in Kurdistan confirming that the concerned mark is filed and providing the full details of same as well as its status in order to protect the mark in Kurdistan by accrediting the registration in Iraq.
2. If the mark is not filed in Iraq the applicant might file an application directly in Kurdistan and the filing requirements are:
- A power of attorney legalized up to Iraqi consulate abroad.
- A copy of the incorporation certificate or extract from the commercial register of the applicant company legalized up to Iraq consulate as well.
- A declaration from the letter head of the applicant that the mark is not registered in Iraq legalized up to Iraq consulate.
Such registrations cover the jurisdiction of the region only and do not provide coverage and registration protection in Iraq.
Source: JAH & Co. IP , Doha, Qatar Oct 01, 2011 (Newsletter Issue 11/11)Trade Marks Amendment Act 2011The Trade Marks Amendment Bill received its royal assent on 15 September 2011 and will be known as the Trade Marks Amendment Act 2011.
On assent the following notable provisions enter into force:
The removal of licensees from the Trade Mark Register
The ability to amend and remove memorandums
Allowing New Zealand to use the latest edition of the Nice Classification for goods and services
Any provisions that require updates to the IPONZ system, practice guidelines and website will be made accordingly.
For more information please click here Oct 01, 2011 (Newsletter Issue 11/11)Introduction of Annual Maintenance FeeThe Turks & Caicos Islands Trade Marks (Amendment) Rules took effect on July 29, 2011.
They require the payment of an annual maintenance fee of USD 100.00 for each trademark registration in Turks & Caicos Islands, beginning January 1, 2012. If a particular mark is registered in more than one class, the official fee of USD 100.00 covers all classes.
A one month grace period until Feburary 1st is allowed each year for late payment, failing which the trademark rights are deemed to be in abeyance and will remain in suspense unless and untill all past due fees have been paid, at which time the rights are then deemed to be fully restored.
Source: George C. J. Moore, Barrister - Carribean Trademark Services, West Palm Beach, Florida
Oct 01, 2011 (Newsletter Issue 11/11)New Trademark LawOn July 2011, a new trade Mark Act came into force. It replaces the old Trademark Act and the Collective Marks Act after more than 50 years. The new law brings Swedish trademark regulation in line with the Singapore Treaty on the Law of Trademarks. The Swedish Patent and Trademark Office (PRV) has now published the most important amendments:
- If your application is dismissed, the new act introduces the possibility of having your application reinstated for processing.
- Formerly, the PRV rejected the entire application even if the hindrance to registration only existed for some of the goods or services you have applied for. Following the new Law, the PRV will reject an application only to the extent that there is a hindrance.
- If someone else submits an application for registration of a trademark that you consider to be yours, you can request the transfer of the application to you. In this case, you need to show that you have better rights to the respective mark.
- The new act contains provisions for administrative revocation. It means that instead of applying for a summons in the district cour, you can request that PRV revokes a registration.
- The opposition period changed to three months of the public notification date.
- A surname will constitute a hindrance to registration in far fewer cases than before. Therefore, anyone who has a distinctive surname must themselves monitor and make sure that no one else registers the name as a trademark to a greater extent than today. Even with regards to artist names, there can be reason for the name owner to monitor his rights to a greater extent.
- The renewal of the registration can even be made by someone other than the owner.
- The owner of a trademark registration, who is neither resident nor running a business in Sweden, must notify PRV of a service agent resident in Sweden. A Notice is regarded to have been served if it has been sent to the address for service stated in the trademark registration.
- A final decision by PRV can be appealed against to the Court of Patent Appeals within two months of the decision date. Even others than the applicant can appeal, if the decision goes against the complainant.
- Confidentiality in trademark cases can be requested by a trademark opponent or owner, if the information is related to business or operating conditions. Information about the party requesting confidentiality cannot be kept secret. Information which is relevant to the assessment of a trademark validity or scope of protection cannot be kept secret either.
For more information on the new trademark law please click here Oct 01, 2011 (Newsletter Issue 11/11)
Deadline to Re-register National Serbian Trademark
We would like to remind you, that the final deadline for re-registration of national Serbian trademarks in Montenegro is December 16, 2011. In the event that a re-registration request is not filed, the national Serbian trademark registration will no longer enjoy protection in Montenegro.
This re-registration process applies to national Serbian trademarks only; International Registrations designating Serbia cannot be re-registered in Montenegro.
Source: Producta Ltd., Zagreb, Croatia
Oct 01, 2011 (Newsletter Issue 11/11)
New Version of Electronic Filing System
The Brazilian Trademark Office has recently announced a new enhanced version of the Brazilian Trademark Electronic Filing System (e-marcas 2.0), to be launched on October 3rd, 2011.
The new version is expected to enable a more secure environment (digital certification) for users and a more user-friendly interface with applicants, also helping reduce impaired functioning, which may occur in the current version.
The use of the new system is expected to contribute to the increasing number of applications, which is likely to reach 150,000 this year – a substantial increase of 15% when compared to 2010.
The new version shall also enable the implementation of multiclass applications and co-ownership of trademark registrations, which are relevant steps for the implementation of the Madrid Protocol.
Source: Veirano Advogados, Brazil
Oct 01, 2011 (Newsletter Issue 11/11)
Simply Signed PoA Accepted
The Registrar of Patents, Trademarks, and Designs in Gaza announced that a simply signed Power of Attorney without legalization is now accepted in respect of services related to patents, trademarks and designs, effective from 13 September 2011.
Accordingly, the filing requirements for patents, trademarks and designs are as follows:
- A simply signed power of attorney clearly indicating the name and capacity of the signatory along with the company stamp.
- Certified copy of priority document if claimed.
In addition to the above requirements, a declaration verifying the accuracy of the Power of Attorney should be filed by the legal representative.
Source: NJQ & Associates, Jordan
Oct 01, 2011 (Newsletter Issue 11/11)
Official Fees Increased and Re-structured
The Council of Ministers has issued their decision No. 178 for the year 2011 by which the official fees in respect of trademark and industrial designs services have been increased.
For trademarks:
The previously implemented sub-classes system has been withdrawn along with their respective extra charges, and the official fees must be paid at filing time instead of separating the fees on each stage respectively.
The total official fees from filing to registration have been increased by 150% compared to the old fees.
For industrial designs:
- Charges: The total official fees have increased to USD $200 instead of USD $170.
- Protection: The design is valid for 10 years and no annuity payments are required to sustain the application.
It is worth mentioning that previously, an industrial design was valid for 5 years, and renewable for 2 periods, each of 5 years, giving a total of 15 years of protection.
This decree was deemed effective from 26 September 2011.
Source: NJQ & Associates, Jordan
Oct 01, 2011 (Newsletter Issue 11/11)
Use Requirement Compulsory
The national Law on Trade and Service Marks that became effective on November 15th, 2008, introduced oppositions and cancellation actions due to non-use.
Effective November 15th, 2011, the use of registered trademarks will be compulsory. The grace period for non-use of a registered trademark is three years as of the registration or the last use date.
This means, that beginning from November 15, 2011, any trademark, registered before November 15, 2008, can be canceled due to non-use. Trademarks registered after November 15, 2008 can be canceled due to non-use after 3 years of non-use.
However, the rules on filing opposition are not adopted yet. The official fee for filing an opposition is about EUR 75.
Source: www.liapunov.com
Sep 06, 2011 (Newsletter Issue 10/11)Trademark Implementing Regulations IssuedThe Yemeni Trademark Office has implemented a new regulation amending the official fees for trademark services. The main amendments are:
- Filing and registration fees have been changed. Please see new fees below.
- Sub class fees will be eliminated.
- Fees for trademarks in black & white and colours will be unified.
The new regulations have not been completely implemented. It is expected in the nearest future.
Source: JAH & Co. IP, Doha, Qatar Sep 01, 2011 (Newsletter Issue 10/11)
IP Protection in South Sudan
The new state South of Sudan which was extracted from the main land of the Republic of Sudan has been announced on July 9th, 2011,
Since there are no IP Laws in the new state, the Sudanese Laws will be applicable until the issuance of their own law. Any registrations at the Sudan office will be valid at the new state and enforceable as well till further notice.
Source: NJQ & Associates
Sep 01, 2011 (Newsletter Issue 10/11)
Opposition System Introduced/Official Fees Reduced
The Patent Office of the Republic of Bulgaria has implemented the regulation on opposition procedure, which entered into force on June 11th, 2011. The new regulation outlines the procedure for drafting, submitting and examining the opposition notices. It applies to trademark applications filed or published after March 10th, 2011.
As the Patent Office does not carry out examinations as to the relative grounds for refusal of trademarks anymore, the official fees for filing and examination of applications for registration of trademarks are reduced. Please view current fees in the country survey (below).
Source: Patent Office of the Republic of Bulgaria,
Borislav Boyanov & Co., Bulgaria
Sep 01, 2011 (Newsletter Issue 10/11)
New Trademark Law
The Kosovo Assembly approved the new Trademark Law which enters into force on September 8th, 2011. Main changes are:
- Trademark rights are acquired through registration only.
- Trademark holders do not need to declare the use or the intent to use the mark at the time the application is filed.
- An observation can be filded within three months from the publication of the application in the Official Gazette.
- Appeals of IPO’s decisions can now be filed within 15 days of the receipt of the decision.
- An accelerated examination of a trademark application can be requested.
- The owner of a well-known trademark may not oppose an application or revoke a trademark registration unless the proprietor also owns a pending application or registration with the Kosovo IPO.
- Relative grounds for refusal: Goods and/or services will need to be similar even in case the earlier trademark has a reputation in the Republic of Kosovo and the use of the trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or reputation of the earlier trademark.
- No invitations to renew trademarks.
Source: Petosevic
Sep 01, 2011 (Newsletter Issue 10/11)
New Agency for Intellectual Property Established
Uzbekistan's president has signed a decree establishing the Agency for Intellectual Property.
“The State Patent Office of the Republic of Uzbekistan” and “Uzbek Republican Agency for Copyright” has ceased to exist as of August 16th, 2011. Address and contacts of the Agency for Intellectual Property remains the same.
Source: Petosevic and the Agency Tria Robit
Sep 01, 2011 (Newsletter Issue 10/11)
Official Fees Increased
The Patent and Trademark Office of Argentina (INPI) has increased its official fees for filing trademark applications for registration effective July 1st, 2011. The current fees can be seen in the country survey (below).
Source: Rattagan, Macchiavello Arocena & Peña Robirosa Abogados, Argentina
Aug 12, 2011 (Newsletter Issue 10/11)End of ReclassificationsThe UK Intellectual Property Office (UKIPO) will cease reclassification of trademark registrations effective October 31st, 2011.
The Registrar offered proprietors with UK domestic registrations in Class 42 the opportunity to reclassify the services affected by the restructuring of the Nice Classification. In some cases this required a new class (or classes) to be added to the registration.
The benefits of reclassifying the UK domestic registrations are questionable as Community Trade Marks and International Registrations (designating the UK) are not being reclassified.
Therefore, the UKIPO stops to reclassify trademark registrations. Up to (and including) this date, any owner of a trade mark registration who wishes to have their registration considered for reclassification may contacting the UKIPO. For more information please click here
Source: Marks & Clerk LLP, United Kingdom
Aug 10, 2011 (Newsletter Issue 10/11)Trademark Searches PossibleThe Intellectual Property Office of Montenegro (IPO) informed that the Trademark Database of Montenegro became available for conducting trademark searches. It is possible to file requests before the IPO of Montenegro for conducting the official searches through national Trademark database.
At this moment, the Trademark Database of Montenegro covers only those trademarks registered or applied for before the IPO of Montenegro. As the process of revalidation of Serbian trademark registrations in Montenegro has not yet been finished, the trademark searches do not cover the Serbian trademark registrations yet. Once the revalidation process is finished (deadline is December 16th, 2011), Montenegrian Trademark Database will be completed. Until then, it is recommended to conduct simultaneous searches in both Montenegro and Serbia to guarantee completeness of the results.
Source: Zivko Mijatovic & Partners, Montenegro Aug 03, 2011 (Newsletter Issue 10/11)
Revocation Process Changed
The Intellectual Property Office of Singapore (“IPOS”) amended the Trade Mark Rules for revocation actions filed on the ground of non-use. In the past, the registered proprietor’s evidence of use filed with the counter-statement has been accepted without the need for such evidence to be sworn.
Pursuant to Rule 69(1) of the Singapore Trade Mark Rules it is now required that “evidence shall be given by way of a statutory declaration unless otherwise provided by the Act of these Rules or directed by the Registrar”. This applies all inter partes proceedings including revocation actions.
This means that if a proprietor intends to defend his trade mark registration against revocation for non-use, he needs to file evidence of use by way of a statutory declaration together with his counter-statement. He is only required to show that he has an arguable case with prima facie evidence such as brochures and sales receipts. The evidence does not have to comprise the proprietor’s entire defence in relation to use as more detailed evidence, can be filed during the course of the proceedings. Alternatively, if a proprietor intends to defend his trade mark registration by giving proper reasons for non-use, he would only be expected to give these reasons in his counter-statement without a supporting statutory declaration.
If evidence is not filed in accordance with the Rules, the application for revocation will be granted and the registered proprietor’s trade mark registration will be revoked. As the Registrar has accepted counter-statements without sworn evidence under past practice, there will be a grace period from 1 May 2011 to 31 October 2011 for proprietors to re-file their evidence by way of a statutory declaration. After this grace period, the Registrar will grant the application for revocation if no evidence by way of a statutory declaration is filed with the counter-statement.
Source: hslegal LLP, Singapore
Aug 01, 2011 (Newsletter Issue 10/11)Change of PracticeThe Swiss Federal Institute of Intellectual Property has announced on its website that applicants with a principle place of business abroad must no longer appoint a representative.
With the entry into force of the Patent Attorney Act (PatAA) on July 1st, 2011, the mandatory appointment of a representative laid down in the Patent Act, Trade Mark Protection Act and Design Act will be set aside: whereas applicants without residence or a principle place of business in Switzerland previously had to appoint a representative domiciled in Switzerland, they may now indicate a correspondence address in Switzerland only. Any communication with the Institute needs to be in one of the three national languages (German, French or Italian).
Source: Isler & Pedrazzini AG, Zurich, Switzerland,
Swiss Federal Institute of Intellectual Property Aug 01, 2011 (Newsletter Issue 10/11)
Notices on Extension of Time
The Intellectual Property Corporation of Malaysia issued Notices on Extension of Time for trademark matters effective from July 1st, 2011
The Notices apply across all applications/registrations which may require any form of extension of time, e.g. for filing responses to Office Actions or taking any proceedings under the Trademarks and Patents Acts and Regulations. A request for extension will be granted for a period of one (1) month up to a maximum of six (6) months from the initial deadline.
Any further requests for extension of time will not be entertained unless accompanied by a statement of case in the form of a Statutory Declaration with reasonable grounds for the Registrar’s consideration.
If the applicant is unable to respond within the granted extension of time, the applicant shall be deemed to have abandoned his application.
Source: KASS International Sdn Bhd, Malaysia
Jul 04, 2011 (Newsletter Issue 9/11)
Deadline for Re-Registration Approaching
The new trademark law that entered into force in Montenegro on December 16th, 2010, obligates the owners of trademarks registered before the Serbian Intellectual Property Office to request entrance of their rights into the Montenegrin trademarks register by December 16th, 2011.
The obligatory re-registration affects national trademarks registered before the Serbian IPO prior to May 28th, 2008, the opening date of the Montenegrin IPO, unless a renewal or request for recordal of changes or Certificate of Registration had already been filed in Montenegro before December 16th, 2010. The deadline is not extendable. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
Source: Petosevic, Montenegro
Jul 01, 2011 (Newsletter Issue 9/11)
Change of Requirements for Claiming Priority
As of June 13th, 2011, the certified copy of foreign applications for trademarks is no longer required for claiming priority. Providing the filing date and number will suffice.
Source: NJQ & Associates
Jul 01, 2011 (Newsletter Issue 9/11)
Official Fees Increased
The Portuguese Patent and Trademark Office announced an increase of the official fees effective from July 1st, 2011. The increase corresponds to 1.4% on all official fees for all services.
Source: Baptista, Monteverde & Associados, Portugal
Jul 01, 2011 (Newsletter Issue 9/11)
Official Fees Increased
The Pakistani Patent and Trademark Office announced on its website that the fee for IP applications i.e. trademarks, patents and copyrights has been restructured and increased, likely effective from June 4th, 2011 (notice of July 6th, 2011).
The official application fee for a trademark is USD 24.00 (approx. EUR 17.00) for one class and USD 24.00 for each additional class. The official registration fee is USD 71.00 (approx. EUR 50.00).
Source: www.ipo.gov.pk
Bharucha & Co., Karachi, Pakistan
Jul 01, 2011 (Newsletter Issue 9/11)Trademark Duration AmendedThe current Norwegian Trademarks Act, which entered into force on July 1st, 2010, amended the duration of trademarks. The trademark duration is 10 years from application date for applications filed on/after July 1st, 2010 and 10 years from registration date for applications filed before July 1st, 2010.
Source: HÅMSØ PATENTBYRÅ ANS, Sandnes, Norwegen Jul 01, 2011 (Newsletter Issue 9/11)
Examination Backlog Cleared
The Italian Patent and Trademark Office announced that its trademark examination backlog has been cleared. Around 160,000 trade mark files were waiting for attention in March last year. A special taskforce of examiners and streamlined processes were introduced to make the office more efficient.
Source: www.uibm.gov.it, www.oami.europa.eu
Jul 01, 2011 (Newsletter Issue 9/11)Opposition Period ChangedThe Swedish Patent and Trademark Office (PRV) has changed the opposition period from 2 months to 3 months effective from July 1st, 2011.
It affects the opposition period for national trademarks as well for international registrations designating Sweden (or subsequent extensions to Sweden).
Source: GROTH & CO KB, Sweden Jun 13, 2011 (Newsletter Issue 8/11)Annuity Payment Reminder for Industrial DesignsWith the Implementing Regulations for the Industrial Designs Law issued in the Official Gazette No. 2936 dated February 25, 2010, payment of design annuities became applicable in Bahrain.
The Patent Office has now started to accept annuities for the existing valid design registrations.
The annuities are counted from the anniversary of the publication date. At present, the Patent Office accepts annuities, which are due for payment after February 25, 2010, which is the issuance date of the implementing regulations of Industrial Designs.
Further, it is noted, that as per the new Industrial Designs Law (2006) in Bahrain, all industrial design registrations are valid for a period of 10 years from the date of registration and renewable for a further period of 5 years.
Source: JAH & CO. IP, Qatar Jun 12, 2011 (Newsletter Issue 8/11)
3D Shape Applications Accepted
The Deputy Registrar in Israel accepted three applications for 3D shapes on the grounds that they are distinctive, even with the absent evidence of acquired secondary meaning.
Source: Dr. Shlomo Cohen & Co., Israel
Ministry of Justice Patent Office, Trademarks Division, Israel
Jun 10, 2011 (Newsletter Issue 8/11)Official Fees DecreasedThe Iraqi Trademark Office issued a new Law No. 9 of 2010 amending some articles of the previous Law as well as fees for trademark services.
Source: Delta Legal Consultations Co. Ltd., Iraq
JAH & CO. IP, Qatar Jun 06, 2011 (Newsletter Issue 8/11)TM Online Registration PossibleThe Commercial Law Department of the Ministry of Commerce and Industry of Nigeria has launched its online registration portal for registration of trademarks, patents and designs.
The service provides:
- Online search application
- Online registration of trademarks, patent and design
- Online payments for services
- Online application for certificates
For more information please click on www.iponig.comSource: www.iponig.com Jun 01, 2011 (Newsletter Issue 8/11)
Deadline to Complete Trademark Applications
The Trademark Office in Kuwait has issued an official notification regarding all pending trademark applications on or before December 31st, 2010 that have already been examined. According to this notification, all requirements related to pending applications must be completed before July 3rd, 2011.
These requirements include settlement of publication fees as well as submission of missing documents (power of attorney and certificate of home or foreign registration/application, both legalized up to the Kuwaiti Consulate). Failure to complete the requirements by this deadline will result in the applications being abandoned.
In case this deadline can not be met for any reason, a letter of undertaking may be filed by the applicant at the Trademark Office agreeing to submit the remaining documents within 90 days from payment of publication fees.
This decision does not apply to pending applications that have not been examined yet and on applications filed after December 31st, 2010
Source: SABA & Co.
Jun 01, 2011 (Newsletter Issue 8/11)
Trademark Office not Functioning
Due to the ongoing unrest the functioning of the Trademark and Patent Office in Yemen has been interrupted.
Source: SABA & Co.
Jun 01, 2011 (Newsletter Issue 8/11)
IP Gazette Introduced
Following ministerial decision number 4, issued on February 14th, 2011, Articles 32 and 34 of Trademark Law No. 1 of 1952 have been amended.
Based on this amendment, all intellectual property updates in the West Bank will be published in a new journal called "Industrial Property Gazette". The new journal will include all IP related matters only. Having an IP Gazette means that publication of accepted applications in the West Bank is expeted to be more frequent and systematic. The first issue of this Gazette has already been released.
Source: SABA & Co.
May 24, 2011 (Newsletter Issue 7/11)New Procedure for Objection to Company NamesSouth Africa has enacted a new Companies Act (Act No. 71 of 2008) which entered into force on 1 May 2011. The same date saw the birth of the Companies and Intellectual Property Commission (CIPC), which replaced the Companies and Intellectual Property Registration Office (CIPRO). The Act has changed the procedure for objections to reserved or registered company names.
The objection to company names is now similar to application procedures before the High Court. Under the previous Act, the objector or his attorney had to address a letter to the registrar, setting out the grounds of objection and the reasons why the registered name was 'undesirable' or 'calculated to cause damage' to the objector. Now the objector has to file a formal application with the Companies Tribunal on a prescribed form, supported by an affidavit which sets out the basis of the dispute. The application must be served on the respondent within 5 days and an answer filed within 20 days, failing which the applicant can apply for default judgement. If an answer is filed, the applicant may file a reply within 15 days after the date of the answer following which the matter is set down for hearing before the Companies Tribunal.
However, the grounds on which an application can be brought remain similar to those of the previous regime, including rights to a trade mark, company, business or protected name registered in terms of applicable legislation. New features introduced by the Act: 1) Company names may now be objected to on the basis of a trade mark application. 2) An objection to a registered company name may be lodged at any time while previously it could no longer be brought after a certain period. 3) The Tribunal may grant an order as to costs.
Source: Spamer Triebel Inc., South Africa May 06, 2011 (Newsletter Issue 7/11)Reconstitution of Misplaced FilesThe Indian Trademark Office (TMO) has announced that a total of 44,404 files relating to registered trademarks are missing from different branches of the TMO.
Registered proprietors are requested to provide duplicate copies of the documents issued by the TMO and other relevant documentation that may assist in reconstitution of the files before July 31st, 2011.
To access branch wise missing files list please click here
Source: Patrick Mirandah PMC Affiliate Office, India May 06, 2011 (Newsletter Issue 7/11)
Accession to the Madrid Protocol
Tajikistan joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol concerning the International Registration of Marks. The Madrid Protocol enters into force on June 30th, 2011. (Tajikistan has been a member of the Madrid Agreement already since December 25th, 1991).
Following declarations was further made:
- Tajikistan opted for the extension of time limit for refusal of protection of an international registration from 12 to 18 months;
- In connection with each international registration designating Tajikistan and the renewal of any such registration, Tajikistan opted for the individual fee system, instead of a share in the revenue produced by the supplementary and complementary fees.
Source: www.wipo.com and Petosevic, Balkan Regional Office
May 05, 2011 (Newsletter Issue 7/11)
New Trademark Act Soon
The Swedish Patent and Registration Office (PRV) announced that a new Trademark Act enters into force on July 1st, 2011. The Act introduces new provisions for family names, artist names and titles. Furthermore, the special protection for distinctive titles is struck.
Applicants can request a suspension of examination of their application containing a family name, artist name or title. In such case, the PRV will not examine the case until the new trademark law comes into force. This is to facilitate the processing of trademark applications which contain a family name, artist name or title. To request a suspension, the PRV needs to be contacted.
Source: www.prv.se
May 05, 2011 (Newsletter Issue 7/11)Opposition Possible NowTrademark opposition will finally become available in Italy in July 2011; a ministerial decree has been signed that lays down the details of the procedure, including costs and deadlines.
Trademarks subject to opposition
a) Italian trademark applications filed as of May 1, 2011.
b) Italian designations of International trademarks, irrespective of their registration (or subsequent designation) date, published on WIPO’s Gazette as of July 2011.
Time limit
Three months starting from the publication date of the application on the National Bulletin or from the first day of the month subsequent to the publication of the Italian designations of International trademarks on WIPO’s Gazette.
Official fees
A fee of Euro 250 must be paid prior to the filing of the opposition.
For more information, please click here
Source: SIB Società Italiana Brevetti, Italy May 02, 2011 (Newsletter Issue 7/11)
Surcharges for Late Renewal of TMs
The fee for late renewal may be paid within a maximum period of six months after the end of the validity of the registration, subject to a fifty percent surcharge.
The Industrial Property Institute (IPI) in Mozambique has announced that the surcharge penalty for late renewals will become operational with immediate effect. The surcharge payments are to be made within 15 days. Otherwise the registration will be considered to be withdrawn. Notices have been sent to IP agents requesting payment of the surcharge for recently filed renewal applications.
However, a request of revalidation of certificates of registration that have lapsed due to the failure to pay fees on time will be possible.
Source: Braz & Associates, Mozambique
May 02, 2011 (Newsletter Issue 7/11)
No Disclaimer Required
After implementation of the Madrid Protocol in September 2010, the Israeli Trademark Office (ITO) has issued a Circular of Administrative Instructions revising its practice with regard to requiring disclaimers. No requirement for a disclaimer will be made from the ITO's part concerning components of the trademark that were considered to lack inherent distinctive nature, if the mark as a whole exhibits distinctiveness. In the past the ITO required such a disclaimer.
Following this Registrar's Circular, the ITO's practice now resembles the OHIM regarding disclaimers in CTMs.
Source: Fisher Weiler Jones, Tel Aviv, Israel
Apr 28, 2011 (Newsletter Issue 7/11)
Change of Office Practice in Opposition Proceedings
The Irish Patents Office has suspended its practice of automatically refusing an application for registration, following the opposition thereto from the proprietor of an earlier mark, against which the Applicant claimed there has been honest concurrent use of the trademark for which registration was sought.
This suspension will continue until a consultative exercise regarding the interpretation and administration of the relevant legislation is concluded.
The effect of the suspension will be that all oppositions will now proceed on the basis of Rules 18 to 25 of the Trade Mark Rules 1996, as amended.
Source: www.patentsoffice.ie
Apr 27, 2011 (Newsletter Issue 7/11)Electronic TM Filing Improved The Hungarian Intellectual Property Office (HIPO) has improved its trademark electronic filing system. As of March 1st, 2011, nearly all trademark prosecution matters, such as requests for official registry excerpts, changes of registered information and accelerated proceedings, can be requested electronically.
The HIPO now also notifies parties about its decisions electronically and regularly updates its online register. The improved system can generate official trademark registry excerpts in a secure electronic format and send them to the rights holders.
Prior to this change, the HIPO only accepted trademark applications and renewals in the electronic form, while all other documents had to be filed in hard copy. The online register was unofficial and was not updated regularly.
In spite of these improvements, the HIPO will still continue to accept all the above-mentioned requests in hard copy.
Furthermore, the name of the Hungarian Patent Office has changed to Hungarian Intellectual Property Office (HIPO) as of January 1st, 2011, in conformity with the Office's wide range of activities, including all titles of industrial property and copyright.
Sources:
Petosevic, Balkan Regional Office and
Hungarian Intellectual Property Office
www.hipo.gov.hu Apr 27, 2011 (Newsletter Issue 7/11)Second IP Gazette LaunchedOn April 12th, 2011, the Kosovo Intellectual Property Office issued its second Official Gazette, listing patent applications, registered patents, registered trademarks, as well as renewed trademarks.
The Gazette is available in Albanian only and can be downloaded here
Source: Petosevic, Kosovo Apr 20, 2011 (Newsletter Issue 7/11)
INPI Website Available in English Now
The first page of the official website of the Brazilian National Institute of Industrial Property (INPI) is in English now available.
Source: César A. Leão Barcellos & Cia.Ltd., Brazil
Apr 16, 2011 (Newsletter Issue 7/11)
PoA Requirements Changed
The Bahraini Industrial Property Office (BIPO) has issued a statement requesting to provide a legalized Power of Attorney (PoA) up to a Bahraini Consulate within three months from the date of filing. Prior to this statement it was requested to submit the legalized PoA at the time of filing.
In case there is no Embassy of Bahrain, then authenticating by any Arab consulate will be accepted.
Source: NJQ & Associates
Apr 14, 2011 (Newsletter Issue 6/11)
Opposition Procedure Operational Soon
A high official of the Italian Patent and Trademark Office (IPTO) told the assembly of the Italian Institute of Intellectual Property Consultants that the opposition procedure for Italian trademarks is to become operational very soon. Most likely, it will be available for Italian trademark applications filed as from May 1st, 2011.
Furthermore, the current registration process could be speeded up to 3 to 6 months after filing, in contrast to 2-3 years until last year.
Source: SIB Società Italiana Brevetti, Italy
Apr 11, 2011 (Newsletter Issue 6/11)Late Filing of PoA AbolishedThe Venezuelan PTO issued an official announcement, informing that applications not accompanied by the Power of Attorney (PoA) will not be accepted. The late filing of this document has been abolished. The annoucement has become effective end of March 2011. Applications without PoA will not be accepted. Furthermore, copies of the Powers will not be accepted either; only original Powers duly legalized will be valid.
Please find below additional information to this matter:
- Although the above resolution was issued in October 2010 same became effective on March 30th, 2011 without previous warning. The information was verbally informed by the PTO officers, who are in charge of receiving the application filings.
- Until now, the resolution involves only new applications, but no specific mention has been made regarding requirements for renewal proceedings.
- Applications filed before March 30th, 2011 will follow the normal course; in those cases the PTO will officially publish a term to complete the formal requirements.
- It is still possible to file general powers, i.e. for all IP matters of the applicant.
- The Priority documents for trademark or patent applications are not involved in this resolution, therefore same can still be filed later, namely within 9 months (trademarks) and 16 months (patents) as from the filing date of the Venezuelan applications.
Source: Moeller IP Advisors, Buenos Aires, Argentina Apr 05, 2011 (Newsletter Issue 6/11)
Opposition Period and Official Fees Changed
The Mauritius Industrial Property Office has changed the oppositon period for national trademarks from 3 months to 2 months, effective from February 26th, 2011.
Furthermore, the official trademark fees have been changed as well. The official trademark application fee for registration is now USD 163.00 (approx. EUR 115.00) for one mark in any two classes. Each additional class is USD 55.00 (approx. EUR 39.00).
Source: De Comarmond & Koenig (International) Mauritius
Etude Philips International Ltd, Mauritius
Apr 04, 2011 (Newsletter Issue 6/11)
Goods & Services Specification Changed
The Trade Marks Registry in Uganda permits now for trademark application to use either the international class headings or the applicants choice of wording.
Before, the Registry insisted that specifications of goods and services be worded exactly in accordance with the class headings as set out in the 9th Edition of the International (Nice) Classification.
Source: Spoor & Fisher, South Africa
Apr 02, 2011 (Newsletter Issue 6/11)
Early Renewal Application Rejected
The Taiwan Intellectual Property Office (TIPO) has stated that if a trademark renewal application is filed more than six months before the expiration of the registration term, the application will be rejected.
According to the relevant provisions of the Trademark Act, an application for renewal of the term of trademark rights should be filed within six months before the expiration of the term; but in practice, the TIPO has never strictly enforced this provision. However, to avoid disputes, any application filed on or after September 1st, 2010 that does not comply with the provision will not be accepted.
Source: Lee and Li Attorneys at Law, Taiwan
Apr 01, 2011 (Newsletter Issue 6/11)
Law on Industrial Property Amended
The Parliament of the Republic of Macedonia ratified amendments to the Law on Industrial Property, which came into force on March 5th, 2011.
The primary reason for amending the Law on Industrial Property is that, as of recently, the Law on Quality of Agricultural Products regulates Protected Designations of Origin (PDO) and Protected Geographical Indication (PGI) for agricultural and dairy products. Thus, the provisions for protection of such products had to be removed from the Law on Industrial Property; other products with PDO and PGI remain under the scope of the Law on Industrial Property.
Another significant change concerns the State Market Inspectorate’s enforcement activities. The Law on Industrial Property now obligates the State Market inspectors to temporarily detain counterfeit goods placed on the market, while the old law did not clearly specify what was to be done with the counterfeits on the market. Instead of detaining the goods, the inspectors often issued orders for these goods to be removed from the market, but the goods were not destroyed and their fate was unknown.
The amendments introduce the possibility of out-of-court settlement.
Source: PETOŠEVIĆ, Macedonia
Apr 01, 2011 (Newsletter Issue 6/11)
Trademark & Patent Office Fully Operational
The Bahraini Trademark and Patent Office is now back to its normal working hours after it had been partially operational due to the unrest in Bahrain.
Source: www.njq-ip.com
Mar 28, 2011 (Newsletter Issue 5/11)
Online Correspondence Service Enhanced
The Intellectual Property Office of New Zealand (IPONZ) has enhanced the submission of the Online Correspondence service to include the ability to preview the uploaded document before submitting.
Source: www.iponz.govt.nz
Mar 28, 2011 (Newsletter Issue 5/11)Publication of Caribbean Netherlands TMsThe Benelux Office for Intellectual Property (BOIP) now has the possibility to publish the Caribbean Netherlands trademarks. A page has been added to their website. The registered trademarks are visible on this website. All the data concerning a specific trademark can be made visible by clicking the trademark's number. The publication only contains published and registered trademarks. It does not extend to pending applications and/or international registrations. The list of published trademarks can be searched by number, trademark, applicant, filing and expiry date.
To enter the publication, please click here Mar 28, 2011 (Newsletter Issue 5/11)Manual of Trademarks Practice UpdatedThe United Kingdom Intellectual Property Office has updated the documents New applications and The Examination Guide: publication and registration.
For more information please click here Mar 24, 2011 (Newsletter Issue 5/11)New Practice for TM FilingsThe Registrar of the Trademark Office in Gaza does not require anymore an extract from the commercial register or certificate of incorporation of the applicant company for filing new trademark applications.
Source: JAH & CO. IP, Qatar Mar 18, 2011 (Newsletter Issue 5/11)
Trademark Office Not Functioning
The functioning of the Trademark and Patent Office in Libya is interrupted due to the ongoing unrest. In addition, the country is currently facing problems in internet connection and in international communication.
Source: SABA & Co.,
Mar 18, 2011 (Newsletter Issue 5/11)Bail–out Measures The Japanese Patent Office (JPO) is informing about the following actions and bail-out measures due to the natural disaster that occured on March 11th, 2011 in Japan.
1. Requests for assistance to IP Offices in various countries/regions
JPO has made requests to all the IP Offices in countries and regions where applications were filled over the last three years from Japan (a total of 90 Offices and institutions) to take bail-out measures on legal period etc. for the Japanese applicants and agents who were not able to carry out the prescribed procedures or contact the Offices due to the Earthquake.
2. Collecting and disclosing information on bail-out measures
JPO has collected information on the bail-out measures for earthquake disasters available in IP Offices in various countries/regions. The information on bail-out measures announced by IP Offices in response to JPO’s request and the information is posted on the JPO website and updated as needed. Please refer to the link below for carrying out procedures regarding foreign applications.
The JPO is still accepting electronic applications as usual. Clients who are unable to file electronic applications due to the Earthquake can carry out the Emergency Procedures (excluding PCT international applications) in Japanese only.
For more information please click here Mar 15, 2011 (Newsletter Issue 5/11)
Translation of Nice Classification (9th)
The Macedonian State Office of Industrial Property (IPO) has published the official Macedonian translation of the Ninth Edition of the International Classification of Goods and Services under the Nice Agreement.
The Macedonian translation is available in print at the Macedonian IPO and in the PDF format on the IPO website.
Source: PETOŠEVIĆ, Macedonia
Mar 10, 2011 (Newsletter Issue 4/11)New Decisions of the Patent OfficeThe Egyptian Patent Office has recently issued two Ministerial decisions which are expected to be implemented shortly which stipulate that:
- It will not be possible to extend the 30-month time limit for entering the national phase under PCT Chapters I and II for an additional 3-month period upon payment of a substantial surcharge for late entry on the filing of a written request for such purpose as per the Ministerial Decree no. 23.
- The official fees for the examination will be increased from EGP 2,000 (approx. USD 338) to EGP 7,000 EGP (approx. USD 1,185) as per the stipulation of Ministerial Decree no. 22.
Source: JAH & CO. IP, Doha, Qatar Mar 08, 2011 (Newsletter Issue 4/11)Availability of Online ServicesThe Intellectual Property Office of New Zealand (IPONZ) is informing that from March 7th, 2011, IPONZ will only provide the online search and/or preliminary advice application form via the IPONZ online facilities.
For further information please click here Mar 08, 2011 (Newsletter Issue 4/11)Country Codes for the Caribbean Netherlands AllocatedThe country codes for the subdivided Antilles used by WIPO and applicants of international trademarks have been made definite.
The Caribbean Netherlands (Bonaire, Sint Eustatius and Saba) was assigned the country code BQ. Curacao was allotted the code CW and Sint Maarten now has the code SX.
Now that the country codes are definite, the AN (Netherlands Antilles) designation will soon disappear from WIPO data. All existing trademarks that formerly bore a Netherland Antilles designation, and therefore have AN as a country code, will automatically be subdivided and assigned the three new country codes (BQ, CW or SX). All new international applications must specify for which part of the former Netherlands Antilles the protection is required.
For further information please click here Mar 01, 2011 (Newsletter Issue 4/11)Cross-Strait (Taiwan & China) IPR Agreement Since November 22nd, 2010, the trademark authorities of China and Taiwan have accepted trademark applications claiming priority based on a corresponding application filed on the other side of the Taiwan strait.
For further information please click here
Source: AFD China Intellectual Property, Beijing, China Mar 01, 2011 (Newsletter Issue 4/11)
Translation of Nice Classification (9th)
The Georgian National Intellectual Property Center (SAKPATENTI) has published the official Georgian translation of the Ninth Edition of the International Classification of Goods and Services under the Nice Agreement.
The Georgian translation is available in print at SAKPATENTI and it contains 45 classes and 11,600 names of goods translated into Georgian.
Source: PETOŠEVIĆ, Macedonia
Mar 01, 2011 (Newsletter Issue 4/11)Cross-Strait (Taiwan & China) IPR Agreement SignedSince November 22nd, 2010, the trademark authorities of China and Taiwan have accepted trademark applications claiming priority based on a corresponding application filed on the other side of the Taiwan strait.
For further information please click here
Source: AFD China Intellectual Property, Beijing, China
Feb 24, 2011 (Newsletter Issue 3/11)
Cancellation Actions, Change in Practice
According to the new Trademark Law which was revised in January 2011 by the Afghani Parliament, filing a cancellation action against a registered trademark can be made within 12 months from the date of registration instead of 36 months. Any person can file a cancellation action.
Requirements are:
- Power of attorney legalized up to the Afghani
- Consulate abroad.
- Evidence of prior registration or use.
The Action is filed before the Commercial Court and may take around 12-18 months.
Source: NJQ and Associates
Feb 24, 2011 (Newsletter Issue 3/11)Free Online DatabaseThe Taiwan Intellectual Property Office (TIPO) has made the online search database of similar trademarks available free of charge to the public effective of January 1st, 2011.
To access the the database (Chinese version) please click here Feb 23, 2011 (Newsletter Issue 3/11)
Legalized Power of Attorney Requested
The Bahrain Trademark and Patent Office (BTMO) has announced that only powers of attorney that are legalized up to any Arab consulate will be accepted. This means that simply signed powers will no longer be admissible in support of trademark, patent and design applications. The document must be submitted at the time of filing.
This decision will cover all trademark transactions, including renewal, assignment, merger and change of name.
Source: NJQ & Associates
Feb 23, 2011 (Newsletter Issue 3/11)
Trademark Office Operating Again
The Egyptian Intellectual Property Office has returned to its normal working routine as of February 15th, 2011 after a period of unrest in Egypt.
The Office has resumed their work and are again able to deliver their services without any delay.
Source: SABA & Co.
Feb 23, 2011 (Newsletter Issue 3/11)
New Trademark Filing Requirement
According to the new amendment of the Iranian Trademark Office, it is now required to submit a copy of the Certificate of Incorporation from the Commercial Register or any equivalent document for new trademark applications.
In case the applicant is an individual, then a photocopy of his passport will suffice.
Source: NJQ & Associates
Feb 21, 2011 (Newsletter Issue 3/11)Electronic 'Registration Certificates' IntroducedThe Industrial Property Registry (SABI) has recently implemented a new procedure by means of which the corresponding certificate is uploaded in the Registry’s database once a particular trademark has been granted and assigned its registration number.
The certificate, however, does not contain an official or electronic signature. The attorney of record for the trademark in question must review the certificate and if it does not have any errors, print it and file it with the Registry for purposes of signature. After 8-10 working days the duly signed certificate may be retrieved. The same procedure applies in case the certificate has an error, the attorney of record must request that the certificate be corrected and files the documents evidencing where the error lies.
To access the website please click here
Source: Baker & McKenzie, Caracas, Venezuela Feb 21, 2011 (Newsletter Issue 3/11)Trademark Regulations ChangedThe Intellectual Property Corporation of Malaysia (MyIPO) has announced some major amendments to the Trademark Regulations, introducing several new Regulations and amendments effective by February 15th, 2011.
Major amendments effects for example the
- Procedure and schedule of fees
- Introduction of electronic filing
- Expedited examination
For more information about the updated Trademark Regulations please click here
Source: www.myipo.gov.my and
KASS International Sdn Bhd, Malaysia Feb 21, 2011 (Newsletter Issue 3/11)Amendments of Trademark LawSome important amendments to the Bulgarian Law on Marks and Geographical Indications (LMGI) enter into force by March 10th, 2011.
The Bulgaria Patent Office (BPO) performs only formality and absolute grounds examination by March 10th, 2011. Under the new system the search for prior trademarks will be dropped.
Furthermore, the opposition period will change from 2 to 3 months, effective from March 10th, 2011.
For more information please click here
Source: Zivko Mijatovic & Partners, Sofia, Bulgaria Feb 07, 2011 (Newsletter Issue 2/11)
Ratification of Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) notifies that Croatia will ratify to the Singapore Treaty with effect on April 13th, 2011.
Source: www.wipo.int
Feb 04, 2011 (Newsletter Issue 2/11)
Official Fees for Trademark Renewals Changed
The Uruguayan PTO has modified the official fees for trademark renewals effective from January 1st, 2011.
Among the main changes it is important to highlight that in the case of the renewal of trademarks during the grace period the Official Fees of a new application apply. Before this amendment, the renewal during grace period had the same Official Fees than any renewal.
Please note that official fees are adjusted monthly according to the local level of prices, therefore, there might be some additional variations.
Source: www.moellerip.com and Fernandez Secco & Asociados
Feb 01, 2011 (Newsletter Issue 2/11)Official Fees ChangedThe Taiwan Intellectual Property Office (TIPO) has changed its official fees for trademark applications effective from February 1st, 2011.
For more information on the amended fees please click here Feb 01, 2011 (Newsletter Issue 2/11)
Mediation Law Changed
The recent sanction of the Argentinean Mediation Law, Number 26859, has incorporated different changes which have direct effects in the trademark administrative proceeding.
Before same, in order to accept complaints of applicants claiming the cease of an opposition, Trademark Office required the completion of the mediation stage within one year as from the notification of oppositions lodged by third parties (according art. 16, Law 22362)
Though mediation is still a preliminary and compulsory stage before Court instance, new law has established that initiation of mediation within the annual term suspends the corresponding deadline that is being resumed from 20 days counted from the mediation Act closure. Term to complete mediation has been set in 60 days, so that there has been an extension of 80 days in that annual term which was originally provided by Trademark Law.
Consistent with these news, Trademark Direction has ruled Disposition Nð 2038/10 which establishes:
- If initiation of a complaint or withdrawal of opposition/s takes place one year after the notification of opposition/s to the applicant, the interested party must justify that terms had been suspended. For such effects, applicant must file a copy of documentation which demonstrates the initiation, extension, or completion of the mediation stage.
- The application will be considered abandoned if the applicant does not give notice of a lawsuit or withdrawal of opposition/s, within three months counted from the annual term. In order to avoid this penalty, applicant must declare every three months that mediation stage is still pending.
These new modifications implies taking special care in the calculation of terms involved, and proceed with the required presentations in order to avoid the abandonment of the application.
Source: www.moellerip.com
Feb 01, 2011 (Newsletter Issue 2/11)Official Fees for Filing an Action IncreasedThe Latvian Parliament has adopted amendments to the Civil Procedure Law according to which the official fees for filing an action in IP infringement and protection matters have been increased three times:
- filing an action: LS 150 (EUR 213)
- filing an appeal against the judgment of the first court instance: LS 150 (EUR 213)
- lodging a cassation complaint: LS 200 (EUR 285).
50 percent of the state fee for filing an action will be refunded, if adopting a decision the court has confirmed a settlement between the parties.
Source: PETERSONA PATENTS Patent and IP Law Bureau, Riga, Latvia Feb 01, 2011 (Newsletter Issue 2/11)Major Changes to Official Fees and TM SearchesMajor changes with respect to official fees and trade mark searches:
Increase of official fees
The official fees for filing a trade mark application in a single class has been increased from INR 2,500 (approximately USD 55) to INR 3,500 (approximately USD 78), with effect from December 29th, 2010. For TM applications filed between December 29th, 2010 and the public announcement of the Notice on January 13th, 2011, an additional fee of INR 1,000 per application (approximately USD 22) will have to be paid before January 30st, 2011.
If this additional fee is paid after January 30th, 2011, the Trade Marks Registry (the “Registry”) will consider the payment date to be the date of filing.
Practice of official trade mark searches discontinued
Official trademark searches will no longer be conducted by the Registry. Proprietors can now conduct trade mark searches on the Registry’s online database. It is accessible free of cost at www.ipindiaonline.gov.in
Advantages: no costs involved in the searches, searches will be easier and faster as the Registry took up to a couple of weeks to issue an official search report.
During the examination procedure, the Registry will still conduct a search for prior trademarks.
Source: Majmudar & CO., Mumbai, India and
Selvam & Selvam, Kilpauk, India Feb 01, 2011 (Newsletter Issue 2/11)
Requirements for TM Filing Changed
The Trademark Office decided on the following changes:
1. Class 33 is not allowed any longer for registration.
2. Simply signed powers of attorney are not accepted. The PoA must be duly notarized and legalized up to the Palestine consulate abroad
3. The PoA must be executed on the same year the trademark application is filed. Powers with an older execution date will not be accepted.
4. The PoA must be accompanied by a Copy of the commercial register of the applicant, legalized up to the Palestine consulate abroad.
Source: www.njq-ip.com, www.sabaip.com
Feb 01, 2011 (Newsletter Issue 2/11)First IP Gazette LaunchedThe Kosovo Intellectual Property Office launched its first Official Gazette, which contains information on all registered patents and trademarks as well as renewed trademarks on December 9th, 2010.
The Gazette is only available in the Albanian language and can be downloaded here Source: www.petosevic.com Feb 01, 2011 (Newsletter Issue 2/11)
New Trademark Law
Bosnia and Herzegovina has adopted a new Trademark Law, effective from January 1st, 2011.
In accordance with the adoption of the new law, the Institute for Intellectual Property of Bosnia and Herzegovina has adopted a new Book of Rules on Procedures for Trademark Registration
The Book of Rules was published in the Official Gazette in December 2010 and entered into force on January 1st, 2011.
Source: www.petosevic.com
Feb 01, 2011 (Newsletter Issue 2/11)
Official Fees Amended
The Israel Trademark Office (ITO) hast changed its official trademark application fees effective from January 1st, 2011.
The official fee is ILS 1,523.00 (approx. EUR 308.00) for the first class and ILS 1,143.00 (approx. EUR 231.00) for each subsequent class.
Source: Bodner Flom, Tel Aviv; Reinhold Cohn & Partners, Tel Aviv and Shilon Zuckerstein & Co., Tel Aviv
Feb 01, 2011 (Newsletter Issue 2/11)
Opposition and Renewal Period Changed
The Yemeni Ministry of Industry and Trade issued on November 21st, 2010 Law No. 23 for the year 2010 relating to Trademarks and Geographical Indications. The new law is effective from February 22th, 2011.
The main important points of this new law are as follows:
- The opposition period has been decreased to 90 days calculated from the publication date. (Article 14)
- The grace period for the renewal of a mark registration has been increased to 12 months, noting this would be subjected to the payment of lateness fine. (Article 24)
- Any mark cancelled by the request of its owner can not be registered by any other interested party for the same or similar goods or services unless after three years from the date of cancellation. (Chapter 05)
- The registration fees can be paid within 12 months from the expiry of the opposition period.
- As indicated in Article (06), well-known marks are now recognized as per the following:
1- Any mark application filed for goods or services identical or similar to a well-known mark would be rejected by the Registrar if the well-known mark is not registered in Yemen.
2- If the well-known mark is registered in Yemen, then any mark application in any class would be rejected for being similar or identical to a well-known mark.
- As per Chapter (04), the new law indicates clear provisions for recording of license agreements and recording of assignments, such as the following:
1- The possibility to record the license agreement for some or all the products covered by a mark registration.
2- It is now compulsory to record the license agreement, as the license will not be affected unless it is recorded with the Trademark Office.
- As per Section (03), Chapters (32-40), the new Law has indicated the protection of geographical indications, and also clarifies the relation between trademarks bearing a geographical indication/ geographical indications.
- The new Law has clearly indicated the possibility of claiming priority within six months calculated from the filing date in any member country of Paris Convention, in this case the filing date in Yemen will be the same as the filing date in the original application. (Article 54)
- The new Law has also indicated the penalties against infringement of marks through legal action with the relative court.
Source: www.agip.com
Feb 01, 2011 (Newsletter Issue 2/11)
Address of Trademark Office Changed
The National Intellectual Property Center (Sakpatenti)" changed its address:
Shota Rustaveli Ave. № 30
0108 Tbilisi, Georgia
Hotline telephones are the same:
+ 995 91-71-80
+ 995 91-71-83
Receiving of information is possible under question-answer regime and via e-mail: info@sakpatenti.org.ge
Source: www.sakpatenti.org.ge
Feb 01, 2011 (Newsletter Issue 2/11)
Official Fees Changed
The Icelandic Patent Office (ELS) has changed its official fees for trademark applications effective from April 1st, 2011.
The official fees for word marks is ISK 22,000.00 (approx. EUR 140.00) for one class and ISK 5,000.00 (approx. EUR 32.00) for each additional class.
Source: GST PATENTBUREAU, Reykjavík, Iceland
Feb 01, 2011 (Newsletter Issue 2/11)Online Service for TM RenewalsThe Swedish Patent and Registration Office (PRV) has created an online service for trademarks renewals.
It is now possible to renew a registered trademark online. You can also use the service to get advice on when it is possible to apply for renewal.
For other changes of information (address, owners, representative, etc.) concerning a trademark registration an application form still needs to be filled out.
To access the online service please click here Jan 01, 2011 (Newsletter Issue 1/11)Bulgarian Trademarks Added to TMviewBulgarian trademarks can be now searched via the free online database TMview provided by the Office for Harmonization in the Internal Market of the European Union (OHIM). The tool enables trademark search on various official online database registers.
To access TMview please click here Jan 01, 2011 (Newsletter Issue 1/11)Official Fees ChangedThe Norwegian Ministry of Trade and Industry has passed a new Regulations on Fees for the Norwegian Industrial Property Office (NIPO). The Regulations entered into force on January 1st, 2011.
Source: Hamsö Patentbyra, Norway and www.patentstyret.no Jan 01, 2011 (Newsletter Issue 1/11)
Accession to Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) notifies that Mongolia will acceed to the Singapore Treaty with effect on March 3rd. 2011.
Source: www.wipo.int
Jan 01, 2011 (Newsletter Issue 1/11)
Trademark Act Amended
The Finnish Parliament has amended section 31 of the Finnish Trademarks Act. It requires that a trademark applicant or proprietor not domiciled in Finland must have a representative resident in the European Economic Area. At the application stage, it is sufficient to submit a power of attorney authorising a representative to represent the client in all matters concerning the application. When the trademark is registered, the proprietor of the trademark must however have a representative resident in the European Economic Area who is authorised to represent the client in all matters concerning the trademark and is entitled to receive summons etc. on behalf of the client in all matters concerning the trademark. The power of attorney submitted at the application stage is therefore no longer sufficient for the registered trademark.
If an applicant or a proprietor of a registered trademark does not have a duly authorised representative, and the applicant or proprietor does not correct the deficiency within a certain time limit, the application will be considered withdrawn or the mark will be removed from the register.
It came into force on January 1st, 2011.
Source: BORENIUS & Co Oy Ab, Helsinki, Finland and www.prh.fi
Jan 01, 2011 (Newsletter Issue 1/11)
Consequences of Dissolution of Netherlands Antilles
As from October 10th, 2010, the Netherlands Antilles ceased to exist as a political entity. The islands of Bonaire, Saint Eustatius and Saba (“BES islands“) have become part of the Netherlands. These islands, also called Caribbean Netherlands, have become special individual municipalities within the Kingdom of the Netherlands. The BES islands are not covered by a Benelux or EU trademark registration.
Curaçao and Sint Maarten have become autonomous states within the Kingdom of the Netherlands. This can be compared with the status of Aruba. Both Curaçao and Sint Maarten are not covered by a Benelux or EU trademark registration.
Current trademark registrations:
BES islands
There is a transitional period with respect to the BES islands. Owners of Netherland Antillean trademark registrations have one year after the dismantling, i.e. until October 10th, 2011, to file maintenance applications for the BES islands. A maintenance application needs to be filed with the Benelux Office for Intellectual Property (“BOIP’). This Office has been appointed to manage the Trademark Register for the BES islands.
Curaçao and Sint Maarten
The situation about Curaçao and Sint Maarten is not clear yet. Most likely existing Netherlands Antilles trademarks will automatically be converted into trademarks for the territories of Curaçao and Sint Maarten. However, it is also possible that trademark owners need to file maintenance applications for these islands too within one year after the dismantling (i.e. until October 10th, 2011). Such maintenance application should be filed with the Bureau for Intellectual Property of the Netherlands Antilles.
International Registrations designating Netherlands Antilles
The above-mentioned transitional period is not applicable to International trademark registrations, designating the Netherlands Antilles. As from October 10th, 2010, those International Registrations continued to have effect in the three new territorial entities. The owner of the International registration was not required to file any request to the World Intellectual Property Organization.
Future trademark registrations
The BES islands have their own trademark law called Trademark Law BES.
Source: www.novagraaf.com
Jan 01, 2011 (Newsletter Issue 1/11)
New Regulations to Expedite TM Examination
In an attempt to expedite the slow processing of old pending trademarks applications which had been filed long time and not examined yet, the Trademark Office in Baghdad decided that examination procedures will be carried out in chronological order, not randomly, giving priority to old applications filed during or after the Iraqi War.
Meanwhile, the examination procedures have already started for the first group of applications bearing filing numbers (44000 to 45000), which are deemed to be completed. The second group of applications will begin shortly and so on for all remaining applications.
As a result, old applications filed early 2004 until 2007 are expected to be examined.
It is decided that recording change of owner's name or address will not be effected unless a notarized declaration or statement attesting this change is submitted and further legalized by the Iraqi Consulates/Embassies abroad. Accordingly, the already filed extracts from commercial registers proving these changes will not be accepted anymore and new notarized and legalized certificates are to be prepared.
Source: www.njq-ip.com
Jan 01, 2011 (Newsletter Issue 1/11)Procedure for Validation of Serbian TrademarksThe new Trademark Law in Montenegro entered into force on December 16th, 2010. According to the provisions of the new Trademark Law, national Trademarks registered before the IPO of Serbia prior to May 28, 2008 (date of opening of the Montenegrin IPO) have to be validated before the IPO of Montenegro.
It will be necessary to provide proof of registration of Serbian National Trademarks and to file a claim for entry into the Trademark register of Montenegro.
Please find below details of the procedure for entrance of Serbian Trademark Registrations into the Trademark Register of Montenegro:
- Obtaining of the Serbian Validity Certificate and forwarding of the same to Montenegro
- Submission of the Serbian Validity Certificate, filing a claim for entry into the Trademark Register of Montenegro and payment of fees for publication in the Intellectual Property Gazette of Montenegro
- Publication of the Trademark in the Intellectual Property Gazette of Montenegro and issuance of the Decision on entrance into the Trademark register of Montenegro
All the rights of the Serbian national trademarks which comply with the above requirement will preserve the same priority and renewal date as in Serbia.
The deadline for complying with the above mentioned procedure is 1 year from the date of entering into force of the new Law – December 16th, 2011. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
The above requirement is not deemed necessary for any Montenegro mark based on a Serbian national trademark for which an action has already been taken directly before the Montenegro IPO prior to December 16th, 2010 (such as renewal, assignment, change of name, etc.).
Source: Zivko Mijatovic & Partners, Montenegro Jan 01, 2011 (Newsletter Issue 1/11)Official Fees ReducedThe Turkish Patent Institute has reduced the official trademark fees effective from January 1st, 2011.
The official fee for a trademark application is TRY 120.00 (approx. EUR 59.00) for a single class and TRY 120.00 for each additional class.
The official fee for issuing the certificate of registration is TRY 400.00 (approx. EUR 197.00).
Please check the official fees here
Source: Istanbul Patent & Trademark Consultancy, Ltd., Turkey Jan 01, 2011 (Newsletter Issue 1/11)
Name of Trademark Office Changed
The name of the Trademark Office in DPR Korea has been changed from Trademark and Industrial Design Department of the State Administration for Quality Management into Trademark, Industrial Designs and Geographical Indications Office of the DPR Korea in December 2010.
Source: NAMSANJAE Patent & Trademark Agency, Pyongyang, DPR Korea
Jan 01, 2011 (Newsletter Issue 1/11)Trademark Guidelines RevisedThe Swiss Federal Institute of Intellectual Property has revised its Trademark guidelines as of January 1st, 2011. Of note are the following changes:
- Adaptation of the guidelines due to the nearly complete waiver of signature requirements, as well as the introduction of the legally binding electronic submission via email
- Amendment of the guidelines regarding rule 18ter 1) GAFO, declaring the declaration of grant of protection obligatory (if no refusal of protection was notified)
The full text of the guidelines is available in German and French. For more information please click here Jan 01, 2011 (Newsletter Issue 1/11)Official Fees ReducedThe Spanish Patents and Trademarks Office (OEPM) has reduced the official fees for 2011.
The official fee for a trademark application is EUR 138,94 for a single class and EUR 90,00 for each additional class.
Please check the official fees here Dec 10, 2010 (Newsletter Issue 17/10)Trademark Law AmendedThe Latvian Parliament has adopted amendments to the Law on Trademarks and Indications of Geographical Origin on October 14th, 2010. The law entered into force on November 17th, 2010.
The major amendments to the law relate to extension of the set time limits and restoration of the missed terms.
The amendments introduced further processing and reinstatement of trights, as well as specified which terms can be extended.
For further information on amendments please click hereSource: www.foral.lv Dec 10, 2010 (Newsletter Issue 17/10)
Filings with Complete Documents Only
Following an Official Notification dated October 1st, 2010 and published on October 6th, 2010, the Venezuelan PTO announced that the filing of any new IP matter will not be accepted unless all the required documents and information are submitted at the same time.
'IP matters' refers to patents, designs, trademarks, comercial names, slogans, trademark renewals, changes of name or address, assignments and licence agreements.
In case the documents are not complete and the legal requirements, such as notarization and/or legalization by Apostille, are not fullfiled, the application will be rejected and will have to be filed later, once all necessary data is complete, and no priority will be considered.
As this new resolution violates certain International Agreements, such as the Paris Convention, the Venezuelan IP Attorneys Association (COVAPI) is presenting its different point of view and complaints and expects some adjustments in the resolution soon.
Source: www.moellerip.com
Dec 01, 2010 (Newsletter Issue 17/10)Changes due to Implementation of Madrid ProtocolThe Israel Trademark Office (ITO) has implemented the Madrid Protocol on September 1st, 2010.
Related changes accompanying the implementation:
- multi-class applications are now possible
- the renewal period is reduced from 14 years to 10 years
- when renewing multi-class registrations, a reduced official fee applies for each class after the first
- the examination period of an Israeli application will be limited to a maximum of 2 years
- no more changes to registered national marks or to marks under application except in very exceptional circumstances
For further information please click here
Source: BODNER FLOM, Tel Aviiv and Fisher Weiler Jones, Tel Aviv Dec 01, 2010 (Newsletter Issue 17/10)New Trademark Law/New Opposition PeriodThe Parliament of Montenegro has passed a new Trademark Law on November 30th, 2010. The law will enter into force on December 16th.
The main novelties which have been introduced in the new Law:
- proof of registration for Serbian national trademarks now required
- no examination on relative grounds during application procedure
- introduction of opposition procedure (opposition period is 3 months from publication of application)
The proof of registration of Serbian National Trademarks is now required for trademarks in Montenegro based on a Serbian national trademark unless an action has already been taken for the respective trademark before the Montenegro IPO (such as renewal, assignment, change of name, etc.).
The deadline for complying with this procedure will be 1 year from publication of the new Law in the Official Gazette of Montenegro. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
As from the enactment of the new Law, the Office will examine only absolute grounds for refusal, while the relative grounds will become subject to opposition proceedings. Any trademark application in Montenegro (excluding trademarks registered in Serbia and Montenegro prior to 28 May 2008) will be published and there will be a period of 3 months as from the publication date, during which time an opposition may be filed. This term is not extendible.
Source: Zivko Mijatovic & Partners, Montenegro Dec 01, 2010 (Newsletter Issue 17/10)
New Trademark Law Issued/Opposition Period Changed
Yemeni President Ali Abdullah Saleh issued on November 22th, 2010, decision No. 23 of the year 2010 concerning trademarks and geographical indications which will be implemented by the Ministry of Industry and Trade.
The 61-article law includes definitions, trademarks, geographical indications, temporary procedures, penalties and general provisions.
Major amendments are:
- the opposition period decreases from 6 months to 3 months
- severe penalties for infringement
- one year trademark renewal period
The new law will come into force 3 months after its issuance.
Source: www.agip.com
Dec 01, 2010 (Newsletter Issue 17/10)
Fee Payment Methods Changed
The Canadian Intellectual Property Office (CIPO) implemented three changes concerning the process when accepting and/or treating fee payments.
1) Foreign Currency
CIPO will no longer accept foreign currencies as payment for any fees. This includes electronic funds transfers (EFT). As of December 1st, 2010, all fee payments must be made to CIPO in Canadian dollars.
2) Electronic Funds Transfers (EFT)
A contract was signed with the Bank of Nova Scotia for the management of all electronic funds transfers made for the Government of Canada. All electronic fee payments to CIPO should now be made through the above noted bank.
3) Credit Card Statements
Beginning December 1st, 2010, CIPO will no longer return credit card slips. However, CIPO will provide monthly credit card transactions summary report.
Source: www.opic.gc.ca
Dec 01, 2010 (Newsletter Issue 17/10)Change in Practise AnnouncedThe German Patent and Trademark Office (DPMA) announced a change in practise regarding the classification of trademark applications received after January 1st, 2011.
In case of imprecise description of the goods and services your trademark application refers to, the DPMA will interpret the respective description by means of the class number indicated in the application.
For more information please click here Nov 03, 2010 (Newsletter Issue 16/10)Application of the Madrid Protocol by the Netherlands AmendedThe Kingdom of the Netherland had extended the application of the Madrid Protocol to the Netherlands Antilles, with effect from April 28th, 2003. As a territorial entity whithin the Kingdom of the Netherlands, the Netherlands Antilles ceased to exist on October 10th, 2010. The territory has been divided into the tree territorial entities of Curaçao, Sint Maarten and the Islands of Bonaire, Saint Eustatius and Saba (BES), each haging a distinctive trademarks legislation and administration within the Kingdom of the Netherlands. The Government of Kingdom of the Netherlands extended the application of the Madrid Protocol to the new independent territorial entities of Curaçao, Sint Maarten and the Islands of Bonaire, Saint Eustatius and Saba effective from October 10th, 2010.
For more information please click here Nov 01, 2010 (Newsletter Issue 16/10)Filing of a Petition against Removed TMs PossibleOver the last six months about 56,429 registered trademarks have been removed due to non-payment of renewal fees. within time. Some of the trade mark matters pending over a very long period have also been removed due to lack of prosecution ignoring the fact that orders were issued earlier for the application to proceed to registration.
Due to complaints against this practice, the Controller of Trademarks has given the opportunity to all proprietors to file a petition against the removal of the respective trademark.
The petition needs to be filed on or before November 30th, 2010, with an official fee of Rs. 2,500 along with a complete case history and with substantial reasons to support the case.
For more information please click hereSource: www.selvamandselvam.in Nov 01, 2010 (Newsletter Issue 16/10)
Power of Attorney Needed
The Trademark Office in Gaza requires now to provide a simply signed Power of Attorney within one month from the date of filing of new applications.
Furthermore, Powers of Attorney from earlier applications are not beeing accepted for new filings.
Source: www.agip.com
Nov 01, 2010 (Newsletter Issue 16/10)Validity of International Registration in GreenlandThe Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to refer to the deposit by the Kingdom of Denmark, on November 10, 1995, of its instrument of ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"). The said instrument contained a declaration that "until later decision, the Protocol will not be applied to the Faroe Islands or to Greenland".
The Director General has the honor to notify the deposit by the Government of the Kingdom of Denmark, on October 11, 2010, of a declaration according to which it withdraws the one made upon ratification of the Protocol "to the effect that until further notice the Protocol should not apply to Greenland".
The said declaration will enter into force on January 11, 2011.
For more information please click here Nov 01, 2010 (Newsletter Issue 16/10)
Legalization of Power of Attorney Required
The Syrian Trademark Office announced that a legalized power of attorney up to the Sysrian consulate Embassy abroad must be submitted for new filings retroactively as of January 1st, 2010. This subsequently involves obtaining the Interior Ministry's approval and super-legalization on this document by the Syrian Ministry of Foreign Affairs.
Legalization involves extra costs and can take up to 2 till 3 months.
Late filing of the PoA within the subsequent six-month grace period is surcharged with fine payment per month/application.
Source: www.ag-ip-news.com
Oct 11, 2010 (Newsletter Issue 15/10)
Fees and Services Amended
The Mexican Institute of Industrial Property (IMPI) has revised fees for services rendered by IMPI with respect to patents, utility models, industrial designs and layout designs of integrated circuits, trademarks, slogans, trade names, appellations of origin, protection of industrial property rights and copyright in trade, technical information services and other general services such as issuing copies, certification and registration.
These amendments take effect on October 11th, 2010.
Source: www.impi.gob.mx and Novopatent International Service, S.C.
Oct 04, 2010 (Newsletter Issue 15/10)Second List of Missing Trademark Files ReleasedThe Iraq Trademark Office posted in its official website the list of trademarks of which files have been lost during the war. The second group of the missing trademark files includes the files of trademarks (16091-22999). Trademark Owners are required to submit evidence of ownership within 6 months starting from September 20th, 2010, otherwise, the registration will be cancelled. To access the list click hereSource: www.delta-lc.com Oct 04, 2010 (Newsletter Issue 15/10)
Accession to the Madrid Protocol
Kazakshstan joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks.
The Madrid System will become effective on December 8th, 2010.
Source: www.wipo.int
Oct 04, 2010 (Newsletter Issue 15/10)
Trademark Journal Now Published Every Monday
The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) of India announced that the Trademark Journal will be now published every Monday starting September 6th, 2010.
Source: www.patentoffice.nic.in
Oct 04, 2010 (Newsletter Issue 15/10)Clarification Notice IssuedThe Office of the Controller Gerneral Patents, Designs and Trademarks (CGPDTM) has given notice for the clarification of the treatment of registered and pending trademarks under Class 42.
For more information please click here Oct 03, 2010 (Newsletter Issue 15/10)IP Service List UpdatedThe Moldovan Intellectual Property Office (AGEPI) has published an updated list of its intellectual property services on its website, in effect since August 1st, 2010.
For more information please click hereSource: www.petosevic.com Oct 01, 2010 (Newsletter Issue 15/10)
Accession to the Nice Agreement
The Republic of Serbia joined the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks on September 17th, 2010.
The said Agreement will enter into force, will enter into force, with respect to the Republic of Serbia, on December 17th, 2010.
Source: www.wipo.int
Oct 01, 2010 (Newsletter Issue 15/10)Opposition Period Reduced by One DayThe UK Intellectual Property Office (UKIPO) has published a new Tribunal Practice Notice 4/2010 which effects the calculation of the oppostion period. The opposition deadlines for UK national trademark applications, the UK designations of trademark applications under the Madrid Protocol and the deadlines to extend the opposition period have been reduced by one day.
This new practice entered into effect on September 30th, 2010.
For more information please click here Oct 01, 2010 (Newsletter Issue 15/10)
New Trademark Rules
Ireland's new Trade Marks (Amendment) Rules 2010 came into effect on October 4th, 2010. They will modernise trade mark proceedings before the Patents Office in several ways. In particular,
- a new procedure gives parties to an opposition the option to file written submissions in lieu of attending a hearing.
- procedures for an application for a declaration of invalidity have been substantially amended, to align them with opposition procedures. Accordingly an invalidity action will involve filing a notice of opposition/counter-statement by way of defence; evidence in support of the action by the applicant for invalidity; evidence by the proprietor of the contested mark; evidence in reply by the applicant for invalidity; and further evidence, with the leave of the Office.
- the number of marks which may appear in a series is to be limited to a maximum of six marks.
- the merger of an applicant or proprietor company with a separate company will now be capable of being dealt with like an assignment, rather than as an amendment to the register.
- the deadline to request a hearing has been extended from 10 days to 21 days.
- a new application form now allows the applicant to declare that it is using the mark or has a good-faith intention to use it, rather than having to choose between the two options.
Source: www.marques.org and www.patentsoffice.ie
Sep 15, 2010 (Newsletter Issue 14/10)
New Trademark Law Approved
On September 8th, 2010, the Kosovo parliament approved the new Law on Trademarks which will replace the 2006 Law No. 2006/02-L54.
The new law needs to be promulgated by the President of the Republic to enter into force. This is expected in the near future.
Source: www.petosevic.com
Sep 15, 2010 (Newsletter Issue 14/10)
Opposition Period Will Change
According to the amendments of the Bulgarian Trademark Law the opposition period will change from 2 to 3 months, effective from March 10th, 2011.
Source: www.boyanov.com
Sep 09, 2010 (Newsletter Issue 14/10)
Goods and Services Tax Increased
The Intellectual Property Office of New Zealand (IPONZ) has introduced the new changes to New Zealand's Goods & Services Tax (GST) rate.
New Zealand’s GST rate will rise from 12.5% to 15% effective by October 1st, 2010. GST is required on fees paid by New Zealand residents or New Zealand based companies for requesting search and preliminary advice, filing a trade mark application and filing a renewal.
Source: www.iponz.govt.nz
Sep 04, 2010 (Newsletter Issue 14/10)Publication of Suspended Trademarks and TradenamesThe notification for trademarks and tradenames suspended by the Spanish Patent and Trademark Office due to formal or absolute grounds, will be published in the Spanish Official Bulletin of Industrial Property, effective by July 19th, 2010.
For more information please click here Sep 02, 2010 (Newsletter Issue 14/10)Guidelines on Trademarking a State NameThe Chinese Trademark Office announced new guidelines on examination of trademarks comprising "中國" (China) or using the prefix "國" (State) ("Guidelines"). The Guidelines, effective from July 28th, 2010, serve to standardise examination practice of trade marks bearing reference to "中國" (China) or "國" (State).
The four conditions should be met simultaneously:
- The establishment of the applicant must be approved by the State Council of PRC or its authorized organizations;
- The applied-for mark should be consistent with the applicant’s corporate name or its abbreviation. The abbreviation should be approved by the State Council of PRC or its authorized organizations;
- The applied-for mark and the applicant have a closely corresponding relationship; and
- The specified goods or services under the applied-for mark should be consistent with the applicant’s business scope approved by the State Council of PRC or its authorized organizations
For more information please click here or contact our partner Peksung Intellectual Property Ltd. Sep 01, 2010 (Newsletter Issue 14/10)
No Power of Attorney Needed
According to the amendment to Article 181 of the Mexican Law of Industrial Property it is now possible to file trademark, tradename and slogan applications before the Mexican PTO with no need of a Power of Attorney, but simple asserting under oath to tell the truth that someone is empowered to act on behalf of applicant(s).
This new provision entered into effect on January 7, 2010, and it is applicable to applications filed before the Mexican PTO as from January 7, 2010.
Source: www.novopatent.com
Sep 01, 2010 (Newsletter Issue 14/10)New Processing Timeframes IntroducedThe Intellectual Property Office of New Zealand (IPONZ) has introduced new processing timeframes for some applications and correspondence effective July 1st, 2010.
For more information about the new timeframes please click here Sep 01, 2010 (Newsletter Issue 14/10)New Rules on Registration of Domain NamesThe FCCN (the Portuguese domain name system managing body) announced a new set of rules regarding the registration of domain names under the ccTLD (country code top-level domain) .pt, which came into force on July 1, 2010.
The main changes are
- Simplification of the registry on .com.pt and org.pt;
- Making the submission easier;
- Arbitration as a mean to solve conflicts
- Domain names under .pt must match a registered word trademark (national, European Communitiy or international registration designating Portugal)
- Reduction of prices
For more information please click here Aug 12, 2010 (Newsletter Issue 13/10)First List of Missing Trademark Files ReleasedThe Iraq Trademark Office posted in its official website, the list of trademarks which files have been lost during the war. The first group of the missing trademark files includes the files of trademarks (1 -16090). Trademark Owners are required to submit evidence of ownership within 6 months starting from June 7th, 2010, otherwise, the registration will be cancelled. To access the list click here
Source: Abu-Ghazaleh Intellectual Property Aug 07, 2010 (Newsletter Issue 13/10)Electronic Submissions by E-mail IntroducedThe Swiss Federal Institute of Intellectual Property (IPI) has introduced electronic submissions by e-mail. It is now possible for all users of intellectual property rights systems to easily submit legally binding applications and re-sponses in electronic format.
For more information please click here Aug 05, 2010 (Newsletter Issue 13/10)Database UpgradedThe Canadian Intellectual Property Office (CIPO) provides a database on its website that now includes better and more complete information concerning all active Trade-mark Opposition and Section 45 cases.
The Trade-marks Database now details the history of all actions taken by the Registrar in all stages of currently active proceedings including whether the Registrar has issued correspondence to the parties or has denied or granted an extension of time. This new information also includes details of a party's up-coming deadline in the proceeding.
To access the database please click here Aug 02, 2010 (Newsletter Issue 13/10)Fee Schedule RevisedThe Korean Intellectual Property Office (KIPO) has announced a new fee schedule, effective July 2010.
To access the list of fees please click here
Aug 02, 2010 (Newsletter Issue 13/10)
Use of Vienna Classification
The National Institute of Industrial Property of Chile (INAPI) announced that the registration of trade marks will be made only based on the International Classification of Goods and Services under the Nice Agreement 9th Edition effective from September 1st, 2010.
Source: www.inapi.cl
Aug 01, 2010 (Newsletter Issue 13/10)Accession to the Singapore TreatyThe World Intellectual Property Organization (WIPO) informs of the deposit by the Government of the Republic of Italy, on June 21st, 2010, of the accession to the Singapore Treaty on the Law of Trademarks. The Treaty will enter into force on September 21st, 2010.
Source: www.wipo.int Aug 01, 2010 (Newsletter Issue 13/10)
Lisbon Agreement Ratified
The Macedonian Assembly ratified the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration at its session on May 31st, 2010.
The agreement will enter into force three months after the date on which the WIPO Director General is notified of the ratification.
Source: www.petosevic.com
Jul 12, 2010 (Newsletter Issue 12/10)
Official Fees Increased
The Ecuadorian Institute of Intellectual Property has increased the official registration fees and opposition fees effective by June 1st, 2010.
The official fee for a trademark application is USD 116.- (approx. EUR 92.-) including the issuance of the title.
There is no longer any requirement to pay for the issuance of the registration title; it will be included in the one-off fee for applications.
The registration fees of three-dimensional trademarks are much higher compared to other trademark registration fees with USD 336.- (approx. EUR 266.-).
Source: www.iloinfo.com
Jul 09, 2010 (Newsletter Issue 12/10)Renewal Proceedings ChangedThe renewal proceedings of trademarks have changed with the new disposition No. M-520/10.
Owner inconsistencies in trademark renewal proceedings must be amended with the pertinent documents showing the legitimacy of the applicant who filed the trademark renewal. The legitimacy must exist before or at the moment of renewing the respective trademark. Otherwise the nullity or rejection of the renewal proceeding could be declared.
This disposition entered in force on April 29, 2010 and will be applied to renewal proceedings that have not been resolved until that date.
Source: Moeller IP Advisors Jul 06, 2010 (Newsletter Issue 12/10)
Deadline for the Exclusive Use of Vienna Classification Postponed
The Canadian Intellectual Property Office (CIPO) has postponed the deadline for using exclusively the Vienna Classification to classify the figurative elements of a trademark until December 2010.
In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.
Source: www.iloinfo.com
Jul 06, 2010 (Newsletter Issue 12/10)Details on Pending Application and Registered TM AvailableThe Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) has made available to the public complete details of pending Trade Mark Applications, Registered Trade Marks including the Prosecution History, Examination Report, Copy of the Application, e-Register of Trade Marks, Copy of the Trade Mark Certificate, Opposition details etc.
To access the database please click here
Source: Selvam & Selvam, India Jul 05, 2010 (Newsletter Issue 12/10)Domain Name Registration LoosenedThe Estonian Internet Foundation has loosened the restrictive registration rules of domain name registration effective by July 5th, 2010.
The new domain regulation will make the .ee ccTLD significantly more accessible: private individuals and foreigners will be able to register .ee domain. One person can register multiple domains.
For more information please click here Jul 02, 2010 (Newsletter Issue 12/10)First Trademark Registration Certificate IssuedThe Libyan Trademark Office has issued the first registration certificates after thirty years.
The Office didn’t announce yet when it will officially start the issuance of Registration Certificates to owners of trademarks.
Source: JAH & Co. IP Jul 01, 2010 (Newsletter Issue 12/10)
Commercial Service Fees Increased
The National Board of Patents and Registrations of Finland (NBPR) has increased the VAT rate on some of the commercial services by one percentage point from 22% to 23%, effective by July 1st, 2010.
Commercial fees for preliminary examinations and the entry in the list for trademarks with a reputation are affected by the VAT rate of 23%.
Fees relating to trademark applications and registrations are exempt from the VAT.
Source: www.prh.fi
Jul 01, 2010 (Newsletter Issue 12/10)
New Trademark Law in Force
The Armenian Parliament has adapted the new Law on Trademarks which entered into force on July 1st, 2010.
The Law broadens the list of signs that can be registered as trademarks by adding holograms and colors or combination of colors to the trademarks defined by the current legislation. The list of signs to be registered as trademarks remains exclusive.
Furthermore, all new trademark applications are to be published in the PTO’s Official Gazette after which any third party can file a remark or opposition within two months from the publishing date.
The new Law on Trademarks abolish the previous Law on Trademarks, Service Marks and Appellations of Origin from the year 2000.
Source: www.petosevic.com
Jul 01, 2010 (Newsletter Issue 12/10)
Opposition Period Changed
The Norwegian Parliament has approved a new Trademark Act, which extends the opposition period from 2 to 3 months from publication date, effective July 1st, 2010.
Other important changes concern the access to administrative review of the Norwegian Patent Office. For example cancellation of trademarks can be reviewed by the PTO instead of having to proceed with a regular law suit.
Source: www.patentstyret.no
Jul 01, 2010 (Newsletter Issue 12/10)
9th Edition of the Nice Classification Adopted
The Government of India has amended the Indian Trademark Rules 2000, adopting the 9th Edition of the NICE Classification. Trademark applications can now be filed in classes 43, 44 and 45, which was earlier filed under class 42.
Furthermore, the amendment will now enable the Registered Proprietor to obtain a duplicate copy or a copy of the Registration Certificate by proving with suitable evidence that the same was never received earlier, without any further payment of fee.
The amended rules are referred to as "Trade Marks (Amendment) Rules, 2010", which entered into force May 20th, 2010.
Source: Selvam & Selvam, India
Jul 01, 2010 (Newsletter Issue 12/10)
Trademark Classification Practise Changed
The National Board of Patents and Registration of Finland (NBPR) announced that trademarks registration applicants must specify the goods to which "retail services" are related under class 35, effective June 1st, 2010.
Source: www.marques.org
Jul 01, 2010 (Newsletter Issue 12/10)
Updates on Annulments/Revocations Available
The Hellenic Industrial Property Organization (OBI) will inform either through its official bulletin or on its website about updates on annulments/revocations of industrial property titles.
Furthermore, monthly discounts or withdrawal rights on industrial property will also be available. No information on these subjects will be provided in the future by letters.
Source: www.kluwermanualip.com
Jul 01, 2010 (Newsletter Issue 12/10)
Changes to Trademark Renewal Reminder Notices
IP Australia issues the Renewal Reminder Notice on two separate occasions effective from May 20th, 2010.
This notice will be issued at 4 months and again at 2 months prior to the Renewal Due Date, if payment for renewal has not been received.
A new Final Renewal Reminder Notice will also be issued at the beginning of the 6 month grace period (when the due date for payment of the renewal fee has passed).
Source: www.ipaustralia.gov.au
Jun 04, 2010 (Newsletter Issue 11/10)Trademark Examination Cycle ShortenedDirector of State Administration for Industry and Commerce, Zhou Bohua, disclosed that China has reversed the passive situation of backlog of trademark examination after two years' efforts. The examination cycle will gradually move toward normalization in 2010 and can be shortened to one year in the end of the year.
One of the reasons for the backlog is the large volume of the trademark applications. China's trademark applications rank the first in the world for seven consecutive years since 2002. As of June 30, 2009 , China's total applications for trademark registration have reached 6.77 million, while effective registered trademarks reached 2.4 million.
For more information please click here Jun 04, 2010 (Newsletter Issue 11/10)
New Law on Trade Names Passed
The Vietnamese government has passed a new law to regulate the company registration procedure and prohibit a company from using, as its name, a trade name, trademark and/or geographic indication belonging to another entity.
The new law, which also includes a new mechanism to resolve trade name disputes, is effective 1st June 2010.
Source: www.pham.com.vn
Jun 02, 2010 (Newsletter Issue 11/10)
Accession to the Madrid Protocol
Israel joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks.
The Madrid System will become effective on September 1st, 2010.
Source: Bodner, Flom & Co., Law Offices and Patent Attorneys, Israel and www.wipo.int
Jun 02, 2010 (Newsletter Issue 11/10)Design Act AmendedNew Zealand has amended the Designs Act 1953 to allow:
1.restoration of lapsed registered designs;
2.restoration of lapsed registered design applications; and
3.publication of registered design application details.
The Design Amendment Act 2010 received its royal assent on 19th April 2010 and comes into force on 19th April 2011 (or an earlier date if appointed by the Governor-General).
For more information please click hereSource: www.baldwins.com Jun 01, 2010 (Newsletter Issue 11/10)New Installment Payment Changes Postponed til July, 2010The Korean Intellectual Property Office (KIPO) has postponed the new changes to the trademark fee payment until the end of July, 2010.
KIPO initially announced that the changes should be effective from June, 2010, as reported in the May Newsletter. For more information please click hereSource: www.ajupatent.com May 28, 2010 (Newsletter Issue 11/10)
Official Fees Increased
The Omani Commerce and industry minister issued on 28 of April 2010 a decision regarding a substantial increase of all official fees pertaining to all intellectual property (Patents, trademarks; design, etc .) effective from 15th of June 2010.
Source: www.smas-ip.com
May 26, 2010 (Newsletter Issue 11/10)Trademark Law AmendedBy enacting Act 169 of December 16th, 2009, the government has adopted a more organized and comprehensive trademark regime. For example a more flexible registration process is available. New elements can be registered like sounds and smells. There has been also some changes for the opposition of trademarks.
For more information please click here to read the article of Moeller IP AdvisorsSource: www.iloinfo.com May 20, 2010 (Newsletter Issue 11/10)Administrative Trademark Fees IncreasedThe United Kingdom Intellectual Property Office increased the administrative fees for recording assignments, licences and security interests, effective April 6th, 2010.
For more information please click here May 16, 2010 (Newsletter Issue 10/10)
Official Trademark Fees Reduced
The Jordanian Trademark Office announced the reduction of the official fees for all the IP transactions. This decision has been announced after the substantial and sudden increase on the official fees for trademark transactions in Jordan as of December 1, 2009, and due to the drop in number of trademark filings and reactions from IP owners and agents.
The total charges for filing, publication and registration of IP transactions have been reduced by 30%. However, the official fees for the final stage of registration were increased from JD100 to JD300.
The new decision wont affect pending trademark applications filed between December 1, 2009 and May 15, 2010, as all registration fees will remain the same as of the date of filing these applications.
Source: www.agip.com
and JAH & Co. IP, Qatar
May 09, 2010 (Newsletter Issue 10/10)New Guidelines for Extension of TimeThe Patent Office of Ireland has introduced new guidelines for dealing with applications for extension of time in respect of trademarks. They will ensure that applications for extension of time are not made routinely, but are the result of, or supported by evidence of unusual or exceptional circumstances like court cases or other proceedings awaiting completion and circumstances beyond the reasonable control of the applicant.
The new guideline is effective on May 4th, 2010.
For more information please click here
May 09, 2010 (Newsletter Issue 10/10)
Online Payment Services for TM Publication Launched
The Chilean Official Journal and the National Institute of Industrial Property of Chile (INAPI) jointly launched an online payment service for the publication in the Official Journal of extracts of trademarks that are accepted for processing.
Source: www.kluwermanualip.com
May 09, 2010 (Newsletter Issue 10/10)
New Trade Mark Journal Released
The local Registry of Nigeria has published a new Trade Mark Journal. Interested parties may object to published marks within a non extendible two month period (expiring on 31 May 2010).
The Nigerian Registry releases its journals only annually.
Source: www.afro-ip.blogspot.com
May 09, 2010 (Newsletter Issue 10/10)
Renewal of Slogans
The actual law established that all slogans "executed conforming to the previous laws will be due when ten years are accomplished up to the legal effect of this law".
That means that slogans registered on/or after November 1st, 2000 have a duration of 10 years from the registration date.
Slogans registered before November 1st, 2000 have to be renewed until October 31st, 2010.
May 05, 2010 (Newsletter Issue 10/10)
Official Publication Fees Increased
The Syrian Minister of Economy and Trade increased the official fees for publication, registration or renewal of trademark and design applications for applicant companies. The Ministerial Decree entered into force as of January 1, 2010.
The new official fee for publication, registration or renewal of any trademark application or renewal application/registration (covering 10 words in the list of goods) for applicant company has been doubled.
Similarly, the Ministerial Decree has lifted up publication or renewal fee for any design application/registration for Applicant Company.
Other publication fees remain untouched.
Source: www.ag-ip-news.com, JAH & Co. IP, Qatar
May 05, 2010 (Newsletter Issue 10/10)
Renewal Process/New Installment Payment Changed
Effective by June 2010, a registered trademark can be renewed without any separate examination.
Furthermore, a five-year installment payment of trademark registration fees will be introduced:
Ten years of trademark registration fees have currently been based on a lump-sum based payment. Starting June 2010, however, the introduction of this system will allow customers to pay the first portion of trademark registration fees at the time of registration and the second portion within five years before the term of trademark rights expires.
May 03, 2010 (Newsletter Issue 10/10)New IP Laws EffectiveThe Law 66/2010 amended the current Romanian Law on Trademarks and Geographical Indications and entered into force in Romania on May 09, 2010. The new law introduces important changes in terminology, improved registration procedure for national applications, and it ensures the existence of a legal framework for the prosecution of European Union community trademarks.
For more information please click hereSource: www.petosevic.com May 03, 2010 (Newsletter Issue 10/10)Practice and Online Services ChangedThe Intellectual Property Office of New Zealand (IPONZ) will change its practice on filing receipts and confirmation copies effective on May 17th, 2010.
Filing receipts will only be issued for documents filed through their online correspondence service.
Paper confirmation copies of documents sent to follow up a document filed online, by email or fax will be returned to the sender.
Furthermore, the IPONZ changed the online services to enhance the searching, application and correspondence services. There will be an extra navigation to related patents, trade marks or designs and a check to make sure you have uploaded the right type of file for your application.
For more information please click hereSource: www.iponz.govt.nz May 03, 2010 (Newsletter Issue 10/10)
Use of Vienna Classification Exclusively
The Canadian Intellectual Property Office (CIPO) is exclusively using the Vienna Classification to classify the figurative elements of a trademark effective by June 7, 2010.
CIPO will end its double codification of figurative elements known as "figurative headings", a non-standardized classification scheme.
In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.
Source: www.opic.ic.gc.ca
May 03, 2010 (Newsletter Issue 10/10)
E-Filing System Available
The Uruguayan Trademark and Patent Office has established an e-filing system for trademark applications available only to Uruguayan trademark and patent attorneys.
Source: www.fernandezecco.com
Apr 15, 2010 (Newsletter Issue 9/10)Domain Name Registration Opened The Colombian Domain Administration has recently opened the second level domain registration for trademark registered world widely.
The .CO launch starts from 1 April, involving a multi-phase plan to ensure for the stable and orderly distribution of domains.
For more information please click hereSource: www.moellerip.com Apr 15, 2010 (Newsletter Issue 9/10)
Adoption of Amendments to Trademark Law
On February 26, 2010, Bulgaria’s National Assembly adopted the draft Law amending the Law on Marks and Geographical Indications. The law was published in the Official Gazette on March 9, 2010 and enters into force in June 2010.
The draft law abolishes the previous practice of substantive examination and introduces opposition procedures. Previously, the Bulgarian Patent Office (BPO) had to examine the mark ex officio on both the absolute and the relative grounds for refusal, regardless whether an opposition has been filed or not.
Under the new system, trademark application will be examined on absolute grounds only and if it meets the requirements, it will be published in the Official Gazette of the BPO. Third parties have three months from the date of publication to file an opposition by submitting a written opposition.
This model corresponds to the examination procedure performed by the Office for Harmonization in the Internal Market (Trade Marks and Designs) - OHIM, which manages Community Trade Marks and Community Designs within the European Union. The transitional and final provisions state that the rules governing the opposition procedure will enter into force 12 months after the law’s promulgation in the Official Gazette.
Another novelty concerns the State Register of Trademarks and the State Register of Geographical Indications maintained by the BPO. The BPO will from now on maintain all files in paper and electronic form. The electronic form will be published on the official website of the BPO and will be available to everyone. The application for registration of a mark or geographical indication can now be filed electronically.
The new system aims to shorten the process of issuing trademark registration and to achieve full compliance with the relevant EU regulations.
Source: www.petosevic.com
Apr 14, 2010 (Newsletter Issue 9/10)Accession to the Vienna AgreementThe Republic of Macedonia ratified the Vienna Agreement on the International Classification of the Figurative Elements of Trademarks.
The said Agreement will enter into force, with respect to the former Yugoslav Republic of Macedonia, on May 26, 2010.
Source: www.wipo.int Apr 14, 2010 (Newsletter Issue 9/10)Improved Trademark Classification WebsiteAn improved version of the trademark classification and examination website has been launched in Switzerland.
The website can be found at http://wdl.ipi.ch Apr 12, 2010 (Newsletter Issue 9/10)
New Trademark Proceedings
As per notification of January 25th last, The Dominica’s Registrar of Companies and Intellectual Property, has provided a list of items and proceedings that must be now officially published:
- New trademark applications filed
- Disclaimers made on trademarks (regarding common expressions, goods, generic voices, etc.)
- Granting a trademark registration
- Invalidation of trademark registration during a court proceeding
- Renewal and/or expiration of trademark registrations (be it the case)
- License agreements on trademarks
- Trademarks Assignments or changes of ownership
Source: www.moellerip.com
Apr 10, 2010 (Newsletter Issue 9/10)
Issuing of Notices of Deficiency
With effect from 19 February 2010, if the application fees of trade mark applications have not been paid at the time of filing, the Trade Marks Registry will issue the notices of deficiency in respect of the non-payment of application fees first. If the application fees are paid within the prescribed period, the Trade Marks Registry will process the applications and if there are other deficiencies in respect of the applications, they will issue further notices of deficiency as required. If payment is not paid within the prescribed period, the applications concerned will be treated as abandoned.
Source: www.ipd.gov.hk/eng
Apr 04, 2010 (Newsletter Issue 9/10)Official Fee Reduction for Second-Level DomainsNIC Bolivia has announced that as of April 1, 2010, second level ".BO" domain names prices charged to registrars were slashed by almost 35 per cent. No price change has been announced for third level (e.g.: .com.bo) domain names.
Source: www.nic.bo Apr 03, 2010 (Newsletter Issue 9/10)
Extension of the .РФ Domain Registration Period
The priority period for registration of the .РФ domain was due to end on 25 March after which the exploitation of the newly registered domain names would have begun. However, just a day before the deadline, it was agreed to extend the period of priority registration until 11 May 2010 due to an extensive amount of administrative queries from various organisations, wishing to reserve some domain names. The Coordinating Centre (responsible for formulating the rules related to registration of domain names .RU and .РФ) did not clarify whether the already registered domain names will become active at the end of the extended priority period or at the originally promised end of March/beginning of April.
Source: www.marques.org
Apr 01, 2010 (Newsletter Issue 9/10)Accession to the Singapore TreatyThe World Intellectual Property Organization (WIPO) informs of the deposit by the Slovak Republic of its instrument of accession to the Singapore Treaty on the Law of Trademarks. The Treaty will enter into force on May 16, 2010.
Source: www.wipo.int Apr 01, 2010 (Newsletter Issue 9/10)Accession to Singapore Treaty by NetherlandsThe Kingdom of the Netherlands ratified the Singapore Treaty on the Law of Trademarks on October 2nd, 2009. It entered into force with respect to the Netherlands Antilles, on January 2, 2010.
The said Treaty will enter into force with respect to the Kingdom in Europe at a later date.
Source: www.wipo.int Apr 01, 2010 (Newsletter Issue 9/10)Accession to the Singapore TreatyUkraine has recently ratified the Singapore Treaty on the Law of Trademarks.
In conformity with Article 28(3), the said Treaty will enter into force, with respect to Ukraine, on May 24, 2010.
Source: www.wipo.int Mar 15, 2010 (Newsletter Issue 8/10)E-Filing of Trademark ApplicationsStarting from 2010 the Spanish Patent and Trademark Office (SPTO) is giving online access for citizen to public services. The SPTO has made available online procedures for e-filing of applications, renewals, appeals, assignment and licence recordations, issuance of certifications or amendments in the entered owner's name or direction.
For more information please click here Mar 15, 2010 (Newsletter Issue 8/10)Filing of Design Applications ElectronicallyDesign applications can be electronically filed at the German Patent and Trademark Office (DPMA) from March 1th, 2010.
For more information please click here Mar 11, 2010 (Newsletter Issue 8/10)
Trademark Procedures Changed
The Tunisian Trademark Office has decided the following regulations as from January 1, 2010:
1- The publication of the trademarks, patents, and designs will be distributed on CDs without hard copies; this will prevent the delay of publication in the print press and the time frame for completing registration will be reduced.
2- The official fees regarding the renewal certificates of trademarks registration should be paid along the renewal application fees. Previously, these fees were paid after the issuance of the certificate. Consequently, the issuance of the renewal certificate will be easier without requesting the certificate fees from the agents.
Source: www.ag-ip-news.com
Mar 11, 2010
Deadline Extended for Montenegro Domain .ME
The period of transition from the current CG.YU domain to the new .ME domain has been extended from September 30, 2009 to March 30, 2010, based on the decision of the International Corporation for Assigned Names and Numbers (ICANN). If current CG.YU domain users do not switch to .ME before the deadline, they will not be able to access their emails and web servers.
Source: www.icann.org
Mar 08, 2010 (Newsletter Issue 8/10)Launch of IP GazetteThe Montenegrin IPO launched its first IP Gazette on 10 February 2010.
The Gazette is available on the Montenegrin IPO website click here
It will be issued three times a year.
Source: PETOSEVIC Montenegro Mar 02, 2010 (Newsletter Issue 8/10)Arabic Domain Passes ICANN EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that Egypt, the United Arab Emirates, Saudi Arabia and Russia are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click here Mar 02, 2010 (Newsletter Issue 8/10)Cyrillic Domain Passes ICANN String EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that Russia, Egypt, Saudi Arabia and the United Arab Emirates are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click hereSource: www.petosevic.com Feb 18, 2010 (Newsletter Issue 7/10)
Substantial Increase of Official Fees
The trademark fees from filing to registration have increased from USD 50.00 (approx. EUR 36.00) to USD 225.00 (approx. EUR 164.00).
Source: Moeller IP Advisors, Buenos Aires, Argentina
Feb 16, 2010 (Newsletter Issue 7/10)
Domain Owners Need to Update Data until March 1st, 2010
Domain owners: Data update or regularization needed until March 1st, 2010 to avoid cancellations of Registrant Entities and their registered Domains.
NIC Argentina will implement in 2010 a new registration and administration system for domain names. Therefore, each Registrant Entity will have to regularize the data registered in NIC Argentina’s database.
Those entities, which have not regularized their information until March 1st 2010, will be cancelled as well as the domains registered under their name.
- Registered Data – Update
The information like address, telephone No., fax No., etc. will have to be updated, since their falseness or inaccuracy could result in the loss of the domain and/or the cancellation of the Registrant Entity.
- Registered Data – Regularization
The data registered under a fantasy name, inexistent company names, non-updated data, duplicated entities, etc., must regularize their situation, since otherwise, this could derive in the loss of their domain names and/or the cancellation of the Registrant Entity.
- E-mail
It is compulsory for every Entity to have a valid and active e-mail address associated. Otherwise, the Entity will be cancelled together with the domains registered under its name.
- CUIT/DNI (Tax-ID-No./ ID)
It is compulsory that every Entity registers (declares) its CUIT, CUIL or DNI (Tax-ID-No. or ID). Otherwise, the Entity will be cancelled together with the domains registered under its name.
Furthermore, on November 25th, 2009 new rules for the registration of domain names under the country code top-level domain .ar (cctld.ar) were approved.
Source: Moeller IP Advisors, Buenos Aires, Argentina
Feb 16, 2010 (Newsletter Issue 7/10)
Singapore Treaty Enters into Force
As reported by the World Intellectual Property Organization (WIPO), on September 18th, 2009 Russia ratified the Singapore Treaty on the Law of Trademarks, adopted in Singapore on March 27th, 2006. The treaty entered into force on December 18th, 2009.
Source: www.petosevic.com
Feb 15, 2010 (Newsletter Issue 7/10)Trademark Invalidation Proceedings ChangedThe UK Intellectual Property Office (IPO) has its handling of trademark invalidation proceedings. The Hearing Officer’s decision will no longer be made on paper. The parties or their legal representatives will be required to attend a full hearing before any decision is made. This is the position only where the challenge to the trademark is made on relative grounds. The IPO’s new approach will likely increase costs for brand owners bringing or defending invalidation proceedings.
For more information please click hereSource: Hammonds LLP, London, UK Feb 14, 2010 (Newsletter Issue 8/10)Collection of Trademark Fees ChangedStarting from February 14, 2010, the publishing fees for the Trademark Bulletin shall be collected within 30 days from the applicant being notified of accepting the filing of the application. Trademark registration fees shall be collected within 30 days from the elapse of the 30 day opposition period starting from the publication date.
Source: JAH & Co. IP and www.ag-ip-news.com Jan 27, 2010 (Newsletter Issue 6/10)
Cayman Islands: Increase of Official Fees
From January 1st, 2010 the application fees for extension of trademark rights to the Cayman Islands based on a prior UK registration has been increased from KYD 150.00 to KYD 200.00 (from EUR 132.00 to approx. EUR 176.00).
The annual fee to maintain the trademark registration increased from KYD 100.00 to KYD 200.00 (from EUR 88.00 to approx. EUR 176.00) for one class. Each additional class costs now KYD 100.00 (approx. EUR 88.00).
Jan 27, 2010 (Newsletter Issue 6/10)IP Bulletin Issued Monthly NowAs of January 2010, the Slovenian Industrial Porperty Bulletin will be issued monthly (formerly bi-monthly).
It will be available free of charge in an electronic format at the Slovenian IPO's website on the last workday of the current month.
The 2010 publication dates are: January 29th, February 26th, March 31st, April 30th, May 31st, June 30th, July 30th, August 31st, September 30th, October 29th, November 30th and December 31st.Source: Slovenian IP Office Jan 21, 2010Arabic Domain Passes ICANN String EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that the United Arab Emirates, Saudi Arabia, Egypt and Russia are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click here Jan 01, 2010 (Newsletter Issue 6/10)
Introduction of Opposition Proceedings and Amendment of Official Fees
With the latest amendment of the trademark law of 2009, trademark opposition proceedings were introduced. Owners of prior trademarks may file an opposition against the registration of confusingly similar trademarks at the Austrian Trademark Office within 3 months from publication. Owners of prior trademark filings have the same right as long as their filing proceeds to registration. Opposition can be filed against trademarks published after July 1st, 2010.
The fees for trademark filing were amended as well: As from January 1st, 2010, the total fees have to be paid at the beginning of the registration proceedings. The fee for each additional class exceeding the 3rd is raised from EUR 25.00 to EUR 40.00. The former trademark duration fee has been integrated with the filing fee. The total filing fee for up to three classes amounts to EUR 329.00, and another EUR 40.00 for each additional class.
Source: Sonn & Partner, Austria
Dec 24, 2009 (Newsletter Issue 6/10)
New Trademark Law in Force
A new trademark Law came into force in Serbia on December 24th, 2009.
The main innovation of the new Law is the introduction of an Appeal stage in the trademark registration procedure. Namely, according to the previous TM Law, the IPO decisions were final and the only option against decisions of the IPO was to initiate an Administrative Court Procedure before Serbian Supreme Court.
It is now possible to file an Appeal before the Government within 15 days as from the date of receipt of the first instance decision. The Ministry of Science and Technological development will probably decide in the second instance.
The Serbian Supreme Court still remains the last instance in the IP matters since the Appellants can initiate the Administrative Court Procedure against the second instance decision within 30 days as from the date of receipt.
Source: Petosevic, Belgrade, Serbia
Dec 17, 2009 (Newsletter Issue 6/10)
Accession to Singapore Treaty
Singapore Treaty on the Law of Trademarks: Accession by the Principality of Liechtenstein
The Singapore Treaty will enter into force, with respect to the Principality of Liechtenstein, on March 3, 2010.
Source: www.wipo.int
Dec 15, 2009 (Newsletter Issue 5/09)
State Office of Industrial Property Publishes New Fees
On October 30, the State Office of Industrial Property of the Republic of Macedonia published new fees.
The changes to the fees are minor. All service fees remain the same. The only change is that unemployed individuals, students, retirees, and disabled persons do not have to pay for searches of the Patent Database. Also, all physical persons that apply for a patent in the area of ecology or protection of the environment can search the Patent Database for free.
In addition, if the patent application is submitted electronically, the granting and printing fees are reduced by 30 percent.
The Macedonian Government approved the fees on September 22, 2009.
Source: www.petosevic.com
Dec 14, 2009 (Newsletter Issue 4/09)
Adoption of the 9th Edition of the Nice Classivication
The Official Newspaper in Guatemala, published on June 22nd, decision 443-2009 taken by the Ministry of Economy, enables the TM Office to use the 9th Edition of the Nice Classification to distinguish goods and services for the registration of trademarks.
Dec 07, 2009 (Newsletter Issue 5/09)
Priority Registration of Cyrillic Domain Names Started
On November 25th, 2009, priority registration started for Cyrillic domain names in the name of trademark owners.
Domain name in the Top Level Domain .rf can consist of the symbols of Cyrillic alphabet, figures, hyphen; it also shall reproduce a trademark registered in the Russian Federation via national or international procedures. The trademark which is a basis for the domain name in .rf TLD also shall be in Cyrillic and be valid on the date of filing a domain name application with the Russian Naming Authority.
The domain name application shall be supplemented with
- copy of trademark certificate (if the applicant refers to International Registration, it is necessary to file a certificate confirming that it is valid in Russia);
- copy of the legal entity or entrepreneur registration certificate.
Documents shall be stamped with company seal, if any.
Priority registration of Cyrillic domain name ends on March 25th, 2010.
Source: www.liapunov.com
Dec 07, 2009 (Newsletter Issue 1/09)
Official Fees Increased
On June 19th, 2009, the National Assembly of Vietnam passed the Law on amendment to a number of articles of the Law on Intellectual Property (Law 2009). Law 2009 will come into effect from January 1st 2010. There were several changes to copyright and related rights.
With regard to industrial property rights, the Law 2009 clarifies the "first to file" principle: In Law 2005, there was no clear guideline on what to do when one person submits more than one application for the same invention; or registers several marks that are identical or similar to the extent there might be confusion when they are used for identical or similar products or services. This matter is settled by Law 2009. Accordingly, if several registration applications are submitted by one person in order to register identical marks used for identical products or services, a protection title shall be granted based on the valid application with the earliest priority or filing date among the applications which satisfy all conditions for the grant of a protection title.
Law 2009 states that administrative penalties may be applied upon the occurrence of acts of infringement of intellectual property rights which cause damages to the author or the holder of intellectual property rights (or customers of the community); the notification to defaulting party is no longer required (Article 211.1.b).
To protect domestic providers of intellectual property representation, Law 2009 affirms that foreign law firms practicing in Vietnam are prohibited from providing these services. Law 2009 also requires more conditions applied to organizations providing intellectual property assessment services and individuals practicing intellectual property assessment (Article 154.1).
Dec 07, 2009 (Newsletter Issue 5/09)
Classification of Products and Services Amended
Based on decision No. 316 which amends the Implementing Regulations, the classification of products and services was amended as follows:
Class 10: Veterinary apparatus and instruments were added, as they were not included in the old Implementing Regulations
Class 28: Decorations for Christmas trees and related products were deleted.
Dec 07, 2009 (Newsletter Issue 5/09)
Substantial Increase in Official Fees
The official fees for transactions pertaining to trademarks, including filing, registration, opposition, and all legal procedures, were increased in Jordan effective December 1st 2009. The increases range from 100% to 2,500% from their previous figures.
Filing is now JD 500.00 (approx. EUR 474.00 or USD 704.00) for one class, publication fee is JD 50.00 (approx. EUR 47.00 or USD 70.00) and registration fee is JD 100.00 (approx. EUR 95.00 or USD 141.00).
Multi-class application is still not implemented.
Nov 17, 2009 (Newsletter Issue 4/09)
New Online Services of Industrial Property Institute
The Mexican Institute of Industrial Property has been improving the electronic services that it provides to the public. In recent years it has created Banapat - a patent and trademark database that logs the publication of patent applications and granted patents, utility models and designs - and MarcaNet, which allows the public to access general information online and consult the status of trademark applications and registrations.
The institute has recently introduced a number of other services.
The Industrial Property Documents Viewfinder - known as ViDoc - allows users to search for, consult and download publicly available institute files on:
- Applications and registrations for trademarks, patents, utility models and designs;
- Litigation (once resolved); and
- Bibliographical files on patents.
ViDoc makes consulting files quicker and more efficient, as users need no longer consult MarcaNet and Banapat individually. Moreover, the two databases provided only general information, whereas ViDoc allows users to view complete files online. Thus, original hard copies must be consulted only where there has been a change of ownership or where the file relates to ongoing litigation, as some writs may not have been documented in the electronic search system.
The Industrial Property Information System's website contains virtual copies of the institute's Industrial Property Gazette for reference and download. These publications include information regarding:
- Publication of patent applications;
- Granted and abandoned patents, utility models and design registrations, trademarks, trade names and slogans;
- Changes of ownership and trademark renewals; and
- Notifications and declarations relating to litigation.
Another online system - the Payment Site and Administrative Services - allows for online payment of government fees. After making a payment using the service, the payer must print a receipt and file it with the institute, together with the relevant briefs. In the event of a payment error or a last-minute decision not to proceed with the filing of a brief, the official receipt can be cancelled and the funds recovered, provided that the receipt has not already been filed.
Solmarnet is a new system for filing trademark applications online. Once the trademark application form is completed online, it is printed and the system generates a reference number. This number indicates the time at which the application was filed with the institute. There is no need to present a separate trademark application, as the Solmarnet application is in the required format. The reference number allows data to be uploaded automatically from Solmarnet and entered directly into the institute's records, which helps to avoid typographical errors. However, the reference number does not constitute proof of filing with the institute. The system can also be used to refile an application in order to correct errors or add missing information.
The institute's new services are free and have been developed to facilitate its management of industrial property matters by making it easier to consult and file information.
Contributed by Amalia Bagües, Becerril, Coca & Becerril SC, Mexico, on November 16th, 2009.
Nov 13, 2009 (Newsletter Issue 4/09)
Trademark Law Amended
On July 15th, 2009 Belarus passed the Law on the Introduction of Amendments to the Law of Republic of Belarus on Trademarks and Service Marks. The Law enters into force on January 25th, 2010.
The amendments shall bring Belarusian law in line with European countries' laws in order to facilitate eventual accession of the country to the World Trade Organization (WTO).
Among other novelties, a chapter on well-known marks is added to the Law, which introduces a definition of a well-known mark an specifies the procedure for recognition of a mark a well-known. The Law is to establish that the term of protection for a well-known mark is infinite, unless its status is successfully changed.
Further there will be the following amendments with regard to the registration procedure of trademarks:
The Law states that it is allowed to register a trademark which term of legal protection has expired, in the name of a new owner not earlier than six months after the expiry of registration. However, if the mark owner has voluntarily withdrawn its trademark registration, the new applicant may register the mark without waiting six months.
The non-use grace period is reduced from five to three years.
The use of trademarks in the Internet and domain names are accepted by the Law.
The Law will not apply to applications that will be pending as of January 25th, 2010.
Source: Dr. Sergey Vinogradov, Pag-e-Pag, Minsk, Belarus and www.bakermckenzie.com
Oct 28, 2009 (Newsletter Issue 4/09)
Registration Fee No Longer Due
Ministerial Order No. 1254/2009 was published on 14th October 2009. It introduces some changes in the Portuguese Patent and Trademark Office (PTO) official fees. These changes have taken effect on 23 October, 2009.
Registration fees concerning trademarks, logos, awards, designations of origin and geographical indications, as well as associated fees (surcharge and revalidation) are no longer due.
Formerly, the final registration of these rights depended on the payment of a registration fee within six months after the PTO's decision of grant. As of October 23, 2009, the registration fee is no longer due.
This Ministerial Order is applicable not only to applications submitted after October 23, 2009 but also to applications for which, at that date, the deadline for payment of the registration fee or its surcharge is still ongoing.
Oct 15, 2009 (Newsletter Issue 4/09)
Boycott Declaration No Longer Required
The Syrian Trademark Office has started as of September 2009 to waive boycott declaration request including applications filed under the new Intellectual Property Law No.8/2007 effective on April 12, 2007.
Accordingly, all foreign first-time applicants, who are not listed on the Boycott List, can file their applications in Syria without the need to provide the Boycott Declaration.
Prior to this decision, applications accepted by the Registrar were referred to the Boycott Office to clear the applicant’s company name. First-time applicants with no prior IP registrations or clearance were required to submit the Israel Boycott Declaration. Once such clearance was obtained, the application processed to registration.
Oct 15, 2009 (Newsletter Issue 4/09)
Postal Address of Trademark Office Changed
Please note that after Nov 1st, 2009 only the following postal addresses must be used:
80297 Munich for key accounts or
Zweibrückenstraße 12, 80331 Munich.
Documents will no longer be accepted at Cincinnattistraße 64, Munich
Oct 08, 2009 (Newsletter Issue 3/09)
New Official Fees Bring Important Adjustments
The Brazilian National Institute of Industrial Property (INPI) has made relevant alterations in its official fees, including for trademarks, effective June 1, 2009. The adjustments' aim is to raise funds for its ongoing restructuring and the training of trademark examiners.
The adjustments correspond to a 17 percent overall increase for trademarks. This is even lower than the rate of inflation experienced in Brazil since the INPI’s last fee increase, which was in 2003.
The new schedule of fees clearly stimulates interest in the electronic filing system: Several fees for online services are now, on average, 25 percent cheaper compared to fees for paper filings for the same services. The new fee schedule increases the discount on all official fees charged to small companies, individuals, nonprofit and public entities, to 60 percent from 50 percent.
Sep 12, 2009 (Newsletter Issue 3/09)
Reduction of Official Fees for Electronic Filing Limited
The reduction of official fees for electronical filing is limited until December 31st, 2009. After this date there will no longer be a cost reduction for electronical filing.
Till December 31st, the fee for one application in up to three classes is CHF 350 (approx. EUR 230.00) and the fee for each additional class is CHF 60.00 (approx. EUR 39.00), if filed electronically.
Aug 18, 2009 (Newsletter Issue 2/09)
Official Fees for Trademark Matters Revised
On May 28, 2009, the Indonesian government issued Government regulation No. 38 of 2009, which took effect June 3, 2009.
The new regulation includes several major changes to the official charges for trademark prosecutions:
The official charge for filing a trademark application is no longer calculated on a lump sum basis. Filing new trademark application (for up to 3 items in the specification of goods/services) was raised from IDR 450,000 to IDR 600,000 (about EUR 42.00). An additional fee for each item exceeding the 3rd of IDR 50,000 (approx. EUR 3.50) has been introduced.
Further, a fee of IDR 100,000 (approx. EUR 7.00) for issuance of registration certificate is imposed. This new charge will apply only to Certificates of Registration issued from June 3, 2009, onward; for those issued before that date, there will be no official charge.
Aug 17, 2009 (Newsletter Issue 2/09)
Official Industrial Property Gazette Published Electronically Daily
In Spain, there was a change at the end of July 09: at the present time the Official Industrial Property Gazette is published electronically daily now. Before, it was published on the 1st and 16th of each month.
Jul 30, 2009 (Newsletter Issue 2/09)
Shorter Processing Times
The processing time of a trademark application is approx. 10 to 12 months. The first office action with regards to absolute ground examination is issued in 2 to 5 months, and 1 to 2 months with regard to formalities examination.
Jul 20, 2009 (Newsletter Issue 1/09)
3D-Shapes Only Non-Traditional Trademarks Registrable Under Japanese Trademark Act
Three-dimensional shapes are the only non-traditional trademarks that can currently be registered under the Japanese Trademark Act. In practice, however, registration of three-dimensional shapes is often rejected by the Japanese Patent Office due to a lack of distinctiveness.
The following marks cannot be protected in Japan: invisible marks (like sounds, tastes, smells and textures), a color or combination of colors (e.g., colors without any shapes) and shapes of marks that are moving or changing (e.g., holograms and moving images).
Jul 20, 2009 (Newsletter Issue 1/09)
Multi-Class Application Now Possible
Currently, the multi-class system has been established, and it is possible to file multi-class applications.
Trademark application must be published in the official gazette “El Peruano” within a period of 30 working days (previously, this term was 3 months from the date of receipt of the office action).
Legal basis is the Trademark Act of 1970 (last amended as of January 14, 2019).
Austria is a member of the Paris Union Agreement, the Madrid Agreement, the Madrid Protocol, the Nice Agreement and the European Union.
Trademark protection is obtained by registration. An unregistered trademark can only be held against a registered trademark if it has become well-known at the priority date of the registered trademark.
Registrable as a trademark are signs of any kind, particularly words, personal names, images, letters, numerals, colours, the shape or packaging of goods and sounds, provided that such signs are capable of distinguishing goods or services of one undertaking from those of other undertakings and can be represented in the trademark register in a way that the competent authorities as well as the public may recognise the subject of protection clearly and unambiguously. Pattern, position, hologram, motion, and multimedia marks are also registrable.
The Austrian law does not differentiate between trademarks and service marks. Special rules apply to collective trademarks. Certifications marks are registrable.
Multiple-class applications are possible.
Applicants not having their residence in the European Economic Area (EEA) or in Switzerland need a local agent.
Power of Attorney has to be presented, simply signed is sufficient. Power of attorney needs not to be presented but just referred to, if an attorney is the representative.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds of refusal. Signs not considered distinctive in the examination can be only registered upon proof of acquired distinctiveness. The Patent Office also conducts a search for identical and similar trademarks, but does not cite officially older rights as bar to the registration. The search results, however, may serve for the information of the applicant. Owners of prior trademarks are not informed. If the trademark applicant insists, the trademark must be registered in spite of similar or even identical prior trademarks.
The application procedure from first filing to registration will take approximately 2 to 3 months if no serious problems are raised by the examiner. The first office action is to be expected after 3 to 4 weeks. Only after registration, the trademark is published in the monthly journal “Österreichischer Markenanzeiger”.
If the applicant uses goods and services from the “Harmonised Database” and if the applicant chooses the “fast track” application process (same fees), then the registration process speeds up to 2 weeks (if the examiner does not refuse registration because of a non-registrable sign). However, a search report by the Patent Office is not part of the “fast track” application process.
The opposition period is 3 months from the publication of the registration in the 'Österreichischer Markenanzeiger".
The protection period is 10 years and the registration is renewable for periods of 10 years without limitation. Since September 13, 2018, the ten-year protection period of national Austrian trademarks is calculated from the date of the application and no longer from the registration. Previously registered trademarks also fall under this new provision. The adoption to the new calculation shortens the next protection period for these trademarks. To avoid this disadvantage, the renewal fees are reduced according to the length of the shortened period for these trademarks.
The official fee for filing a trademark application is EUR 280 online and EUR 300 in paper in total for up to three classes and EUR 75 for each additional class.