Following the UK vote to exit the EU, an important question is: will the EU trademark (formally known as Community Trademark) continue to cover the UK? The UK’s Intellectual Property Office (IPO) did not yet comment on the potential impact on trademarks and designs following the Brexit on June 23, 2016. If the UK is indeed going to leave the EU, chances are that the UK will no longer be a part of the EU trademark and EU design systems.read more
IMPORTANT NOTIFICATION FOR TRADEMARK HOLDERS: REFORM OF EUROPEAN TRADEMARK LAW
All trademark holders and prospective trademark holders pay attention! The "Trademark Reform Package", packed with major changes in European Trademark Law will come into effect as of 23 March 2016. A few of the most important amendments are presented below:
The World Intellectual Property Organization (WIPO) announced that as of December 18, 2015 Gambia will join the Madrid System for the International Registration of trademarks. This means that as of this date it will be possible to designate Gambia in your International application. Other new members who also recently joined the Madrid protocol are Cambodia and The African Intellectual Property Organization (OAPI) on March 5, 2015 and Zimbabwe on March 11, 2015.
The World Intellectual Property Organization (WIPO) announced this year that the African Intellectual Property Organization (OAPI) will join the Madrid Protocol as of March 5, 2015.read more
The Saudi Trademark Office (STO) announced on January 14, 2014 that the official e-publication fees for all new trademark applications has been increased with immediate effect.
The Benelux Intellectual Property Office, BOIP, 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.
The Uruguayan Parliament has revised the legislations with respect to the use of registered trademarks.
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. Previously, one multi-class renewal application was filed covering several classes.
IPLAA amends the South African Performers’ Protection Act, Copyright Act, Trade Marks Act and Designs Act. The aim is, among other things, to provide for the recognition and protection of certain manifestations of indigenous knowledge as a species of intellectual property.
In accordance with the Bureau of Grievance, an opposition against a published trademark or Registrar Decision has to be filed at the official registered office. The opposition period in Saudi Arabia starts from the date of notification of the opposition or from the date of advertisement. The opposition period is 90 days.
Some statistics on IP rights-related crimes for the first half of 2013 where released by The Supreme People's Procuratorate (SPP), which is the highest agency at the national level responsible for both prosecution and investigation in the People's Republic of China.
On September 20, 2013 the International Trademark Association (INTA), which is an international non-profit association of trademark owners, professionals and academics, was granted leave by the Quebec Superior Court to intervene in a declaratory judgment proceeding pertaining to the interplay between the Quebec Charter of the French Language and trademarks.
As of October 1st 2013, the opposition period for new applications will be determined in a new manner by the BOIP. Therefore the following changes should be taken into considertion when filling trademark registrations within the benelux.
As indicated by the Intellectual Property Appelate Board (IPAB) if a product’s name describes its quality it can be used as a trademark.
DPMA, the German Patent and Trademark Office, announced that Christmas Eve and New Year's Eve are counted as normal business working days and not as official holidays.
The Iranian trademark authority decided to upgrade their registration process into an electronic application.
IKEA , world’s largest furniture retailer, has recently filed a trademark infringement lawsuit against a Russian resident named Azamat Yulbarisov. Yulbarisov is the owner of the website provider Garant-Park-Telekom and the website dostavkaikea.ru.
Panama has signed an agreement called the Trade Promotion Agreement (Free Trade Agreement) in June 2012 and it became effective in end of October 2012. The trademark and patent regulations in Panama have changed in order to be in compliance with the Trade Promotion Agreement.
McDonald's Corp., the world’s biggest hamburger chain, has filed trademarks for ground and whole bean coffee, meaning that it may start selling its brew in stores or in supermarkets. Last month the company filed the trademarks for "McCafe" ground and whole bean coffee.
In 2011 the Libyan Trademark Office started issuing registration certificates, however because of civil unrest in the country the documents were kept on file without notification of the agents of record.
The Brazilian Patent and Trademark Office (BPTO) issued a Normative Legal Opinion (INPI/CPAPD 001/2012) on August 21, 2012 centralizing the view that coexistence agreements are to be taken into consideration as a part for the examination 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.”
Taiwan’s newly amended Trademark Act entered into force on July 1st 2012.
An important advantage of a trademark over other IP rights is that the period of protection is unlimited by regular renewal. In other words, the trademark owners could monopolise their mark forever. Other parties could not use the registered trademark without a permission from the trademark owner. However, the third party could produce the same product under a different trademark.
The cost of filing an application per class increase with about 25%. Nevertheless, the Australian Intellectual Property office is introducing reduced filing fees for applications filed using the pre-approved goods and services classification pick-list. The reason for this reduction is an effort to decrease the administrative costs that are associated with the correction of applications that have an incorrect specification(s). However, this pick-list might not be the best choice for trademarks with complex specifications.In addition, an increase in official fees will also be imposed on the registration fees for the issuance of the registration certificate. The new fee will take effect from 1 July 2012.
Apple has been accused of infringing on a trademark of the name Snow Leopard, by a Chinese company. Just after Apple settled its iPad trademark dispute with Proview in China, this new lawsuit started.read more
The Navajo Nation has recently started a lawsuit against the popular clothing seller Urban Outfitters. The case alleges trademark infringement, as well as violations of the federal Indian Arts and Crafts Act. The federal Indian Arts and Crafts act is rarely seen in court, but makes it illegal for companies or individuals to sell arts and crafts in a way that would falsely suggest the products were made by Native Americans. The lawsuit seeks financial damages and an injunction to prevent Urban Outfitters from using the Navajo name or other variations on its products.
Trademark dispute Russia: Bulgari Wins Trademark Dispute Against Russian Perfume Maker. In a trademark dispute between the Russian perfume and cosmetics producer Almaz-M and the Italian jeweler and luxury goods retailer Bulgari, the Moscow Commercial Court ruled in favor of Bulgari on the 29th of May 2012.read more
Zynga , which is a American Social games maker and the creator of Farmville and Cityville, is suing a French games developer for using the word ‘ville’ in the title of one of its games.Zynga is behind several games with the word ‘ville’ in the title. nevertheless, it does not own the trademark to the word in this context.
The Moscow Commercial Court supported Russia’s PTO decision on the 23rd of May 2012, refusing to allow Parfumeria XXI Veka, the Russian perfume producer, to register the word mark “Avatar” as a trademark for perfume.
Many well known brand in the UK have had the rights to their names in China snapped up without their permission by trademark "squatters". The Daily Telegraph did a investigation and they revealed that very few British companies own the Chinese rights to their names, posing a potential hurdle to attempts to expand their business in the country. China's trademarks operate on a "first-to-register" basis, which means whoever registers their brand first has the rights to it.
The company Yarra Valley produces a specialty marinated cheese named PERSIAN FETTA. Yarra Valley sued Lemnos Foods for infringing on its trade mark. However, Lemnos counter claimed for cancellation holding Yarra Valley’s trademark as descriptive. Yarra Valley had applied to register the mark and it was granted in May 2002. Subsequently Yarra Valley licensed the mark to National Foods for their cheese range.
One Direction, Simon Cowell's British boy band, has been sued for trademark infringement because it is using the same name as a small California pop-rock group.
The Australian Federal Court has ruled that trademark holders can sue for infringement where their licensees and their associates market trademarked products circumscribed by territorial limitations, in a stricter enforcement of laws against illegal parallel imports. An associate of Great White Shark Enterprises (GSW) (trademark owner), The Greg Norman Collection Inc, had entered into a licensing agreement with the Indian manufacturer BTB Marketing for the production and retail of Greg Norman products exclusively in India.
The company Yarra Valley produces a specialty marinated cheese named PERSIAN FETTA. Yarra Valley sued Lemnos Foods for infringing on its trade mark. However, Lemnos counter claimed for cancellation holding Yarra Valley’s trademark as descriptive. Yarra Valley had applied to register the mark and it was granted in May 2002. Subsequently Yarra Valley licensed the mark to National Foods for their cheese range.read more
Oprah Winfrey wins the trademark infringement lawsuit regarding the phrase “Own Your Power”. Last year the life coach and owner of Own Your Power Communications, Simone Kelly-Brown, filed a trademark infringement complaint. She insisted that her company created the phrase “Own Your Power” and the acronym OYP. The complaint was filed against Oprah Winfrey over the phrase “Own Your Power”. Kelly-Brown had applied for trademark rights to the phrase in 2007 with the United States Patent and Trademark Office (USPTO).
Four trademark applications for the term “crackberry” have been rejected by the trademark board for the United States Patent and Trademark Office (USPTO). The reason was because the term would weaken Research in Motion Ltd’s (RIM) “Blackberry” trademark. The term “crackberry” is actually used to describe people who are “addicted” to their Blackberry’s in a jokingly fashion.
Basically, a trademark is any sign distinctive enough to distinguish the origin of a certain product. Good examples to illustrate 3D mark are the Coca-Cola’s stylish bottle and Toblerone’s triangle shape package.
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.
The UK Intellectual Property Office (UKIPO) will stop 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 Intellectual Property Corporation of Malaysia issued Notices on Extension of Time for trademark matters effective from July 1st, 2011.
The Patent Office of the Republic of Bulgaria has implemented the regulation on opposition procedure, which became effective 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 have been reduced.
Source: Patent Office of the Republic of Bulgaria
It was established that as a result of placing protection over public properties by the National Transitional Council, the offices have not suffered any damage throughout the recent Libyan revolution and the files are unharmed.
The European Union Trademark Office (OHIM) has launched a new trademark search service, eSearch plus. This service combines the data held in 10 previous databases. With the eSearch plus we can search and monitor Community trademarks and registered Community designs, as well as look for owners, representatives, and related case law.
The intellectual Property Office in Montenegro has announced changes under the new law on the Protections of Industrial Designs. Also the procedure for registration of industrial designs has been simplified to achieve compliance with the relevant EU regulations. Now only the formal requirements are being examined by the office, the novelty and individual character of the designs are no longer taken into account.
The European Union Trademark Office (OHIM) released a statement based on their latest figures that there were 833 Community Trademark applications from Irish based applications in 2010. This is an increase of around 3.5% on the 2009 figure and 5% on the 2008 figure. Nevertheless, there were 2,230 national Trademark application in Ireland in 2010, more than 2.6 times the numbers of Community Trademark applications.
The Canadian Internet Registration Authority has announced changes to the Domain Name Resolution Policy (CDRP) for ‘.ca’ domain names. Among other developments, the CDRP will be more consistent with the Uniform Domain Name Dispute Resolution Policy, which governs top-level domain name disputs.read more
The Chinese government has revealed plans to promote respect for IP rights and limit infringement online. The new measures, outlined in a joint statement by the State Intellectual Property Office and the State Administration of Radio, Film, and Television, include added responsibility for internet service providers to monitor the content hosted on their servers.
A deputy registrar of trademarks at the Indian Patent and Trademark Office has been arrested by government investigators for possessing 3.8 kg of gold and Rs10 million. SpicyIP reports that the allegations of corruption laid against the deputy registrar could be tied to the removal of the MANJAL mark from the register. Safir Anand, senior partner at Anand and Anand, said that he welcomed the development: “By and large the registry Is doing well. This action will address the purpose of accountability and transparency.”
In the latest installment of the battle between Pernod Ricard and Bacardi over the ownership of the HAVANA CLUB marks, the Supreme court has ruled in favour of Pernod Ricard. Bacardi has nevertheless vowed to “pursue all available legal options to protect its legitimate ownership” of the mark. Meanwhile Bacardi received more positive news in the US, where the District of Columbia court of appeals ruled that the US Treasury Department’s Office of Foreign Assets Control was entitled to refuse Pernod Ricard’s Havana Club partner, Cubaexport, the renewal of its trademark rights in the Havana Club name.
An amendment to the Act against Smuggling Crimes has been published in the Official Gazette. The amendment seeks to criminalize and punish acts and omissions that constitute criminal or administrative smuggling acts. It also aims to strengthen controls over customs officers and their assistants.
On July 1st 2010 the current Norwegian Trademarks Act was entered into force and changed 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.
The opposition period has been changed by The Swedish Patent and Trademark Office from 2 months to 3 months. The change will become effective as of July 1st, 2011.
The Portuguese Patent and Trademark Office announced an increase of the official fees and it would become effective as of July 1st, 2011. The increase corresponds to 1.4% on all official fees for all services.
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Trademark Portfolio management
Handling Trademark refusals
Handling Trademark oppositions