Argentinian Patent and Trademark Office Establishes the Reinstatement of all Suspended Terms by Resolution No. 194-2020.
The Argentine Patent and Trademark Office published in the Official Electronic Bulletin dated November 24, 2020, Resolution No. 194-2020. This Resolution establishes the reinstatement of all suspended terms as from December 14, 2020.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or question you may have.Read More
The Argentinian Patent and Trademark Office published the Resolution N 183-2020 in the Electronic Official Bulletin of November 10, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020, 167-2020 and 171-2020 until November 29, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.Read More
The Argentinian Patent and Trademark Office published the Resolution N 171-2020 in the Electronic Official Bulletin of October 27, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020 and 167-2020 until November 8, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
The Argentinian Patent and Trademark Office published the Resolution N 167-2020 in the Electronic Official Bulletin of October 14th, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020 and 142-2020 until October 25th, 2020, inclusive.
Please do not hesitate to contact us at any time with any doubt or questions you may have.Read More
The Argentinian Patent and Trademark Office published the Resolution N 142-2020 in the Electronic Official Bulletin of September 22nd, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020 and 127-2020 until October 11, 2020, inclusive.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, and 116-2020 until September 20th, 2020, inclusive.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
If you are looking to designate Brazil or Germany in your international trademark application, this article is perfect for you. Here, we shall cover the procedure relating to notification of provisional refusal by a pre-registered Brazilian or German TM holder who believes that your international trademark application would infringe on their pre-existing IP rights.
Here, we will go over the procedures to go against such a notification and fight to protect your IP in Brazil and Germany.
Provisional Refusals Brazil
Brazil recently joined the Madrid Protocol in 2019, making it one of the newest members of the Madrid Union. In the Brazilian legal framework, the key law to be aware of is the Law on Industrial Property (9,279/1996), and the national TM office is the Brazilian Patent and Trademark Office (BPTO).
It should be noted that due to the nature of Brazil’s accession to the Madrid Protocol, if you already have an international trademark then you will not be able to simply designate Brazil as a new territory in which their brand is protected, but instead you will have to file a separate international registration from the beginning through the WIPO or choose to file a national application through the BPTO.
Therefore, if you have manoeuvred this system and have submitted your international trademark application, then that’s the first obstacle over and done with.
Brazilian IP Gazette
Once the BPTO has received the application, it will be published in their national bulletin, the Brazilian IP Gazette. From this date, any third party may file an opposition against the application within 60 days. The notice of opposition will then be published in the Brazilian IP Gazette around 60-90 days after the filing of the opposition.
At this point, all applicants should be aware that, unlike other members of the Madrid Union, Brazil does not publish any notice of opposition through WIPO channels – they will only be published on the Brazilian IP Gazette. Therefore, all applicants should be aware of the need to monitor the updates on the Gazette throughout the duration of the application procedure – we offer this service free of charge with any international trademark application.
The trademark applicant then has 60 days from the date of the publication of the notice of opposition to reply and reinforce their claim. Once submitted, the BPTO will examine the entire application, including any oppositions and counter statements to oppositions, and will publish a decision within 12-18 months. This is unlike many signatories to the Madrid Protocol, given that the BPTO does not make independent decisions specifically regarding oppositions. They take the application as a whole, including oppositions, and carry out a full analysis of the trademark application.
If the final outcome is unfavourable, it is good to know that all BPTO decisions are subject to appeal. Any party to the proceedings may make an appeal to the President of the BPTO within 60 days of publication of the decision in the Gazette. The President will then look over the application once more and within 6-8 months will give a decision on the appeal. This is a final decision and puts an end to the administrative proceedings.
If you need help with a trademark application or any other IP matter in Brazil, we’d love to help you out.
Provisional Refusals Germany
Germany is one of the most popular countries in Europe for trademark applications and has a similar procedure for provisional refusals under the Madrid Protocol as many of its European neighbors. The relevant national law is the Trade Mark Act, and the national TM office is the German Patent and Trade Mark Office (DPMO).
German Trade Mark Journal
Once the application has been received by the DPMO, it will be published in the German Trade Mark Journal, from which date any preregistered TM holder will have 3 months to file an opposition (Form W 7202) and pay the corresponding fees – €250 plus €50 per extra opposing sign.
Once initiated, trademark opposition proceedings in Germany tend to be documentary proceedings consisting of one or two rounds of submissions from both parties, during which the opponent and applicant will make their claims, which if they are to have a strong chance of succeeding, must be well-structured and based on coherent legal arguments – these submissions ought to be redacted and revised by an experienced IP lawyer. Usually, there are no oral hearings at any stage of the opposition proceedings.
At the request of both parties, the DPMO will grant a cooling-off period, similar to the EUIPO in their provisional refusal proceedings, with a duration of 2 months in which the parties may attempt to come to an amicable settlement regarding their trademark dispute. If unsuccessful, the documentary rounds shall continue and the DPMO will give a decision within 12-18 months.
If the final decision of the DPMO ends up being unfavourable, it is still possible to make an appeal to the Federal Patent Court. Such an appeal must be filed in writing with the DPMO within 1 month of the publication of the decision. In this appeals process, a Board of Appeal shall be established that will dictate the proceedings.
The decision from this Board shall be final, unless in said final decision the Board allows for appeal on points of law. If you are able to make an appeal based on points of law, then you may have the chance to appeal to the Federal Court of Justice, however, this is under very limited circumstances – see Section 83 of the Trade Mark Act. Any decision from the Federal Court will be final and no further appeals would be permitted.
Due to the documentary nature of the German provisional refusal proceedings, it would be highly recommended to make good use of an experienced IP lawyer to assist you in the drafting of your submissions to the DPMO. If you have any doubts or would like assistance in any IP-related matter, let us know, and we can get the ball rolling right away.Read More
If you’re reading this, it’s safe to imagine that you have applied for an International Trademark, filled out all the forms, and followed the TM registration procedure, but now you are faced with a Notification of Provisional Refusal. One (or more) of the national trademark offices has found a potential problem with your application for IP protection in their country. Or, perhaps you’re looking to file a provisional refusal against a foreign company that would be infringing upon your IP.
Now, depending on the national office, the details of how exactly to oppose such a notification vary depending on the national IP office’s rules and regulations. This is the first of a [X] part, country by country guide on how to oppose to a notification of provisional refusal when registering for an International Trademark.
European Union Notice of Opposition Proceedings
When filing for an international trademark in order to protect your brand across Europe, it may be more convenient and economical to designate the EU as the protected territory instead of individual countries. The manner in which the EUIPO deals with such a designation differs to other countries such as the UK, where the procedure is dealt with nationally.
When the EUIPO receives an application through the WIPO, it will publish the requested trademark’s details in the EUTM Bulletin in Part M, which is dedicated entirely to international Trademark registrations. Once published through the Bulletin, the EUIPO will:
1. Prepare search reports (which, if you wish to access them, you will have to request a copy).
2. Conduct an examination of various formalities that may be relevant to your particular application.
3. Conduct an examination of potential absolute grounds for refusal and of any oppositions that are placed by pre-existing trademark holders within the EU.
We will focus on the procedure for any notice of opposition (or provisional refusal). EU trademark holders will have 3 months from the publication of the application in the EUTM Bulletin to file an opposition – this 3-month period starts exactly 1 months after the application has been published in the Bulletin.
If the EUIPO accepts the notice of opposition, then a notification of provisional refusal is sent to the WIPO, where the applicant will consequently be notified. At this moment, the need for a European representative may arise. This would occur if the applicant is not domiciled within the European Economic Area (EEA).
Once the opposition has been admitted by the EUIPO, the applicant and opponent will have to follow the EU procedure for notices of opposition.
United Kingdom notification of provisional refusal
The UK is a historic world economy that has always hosted a vast array of businesses, so it would come as no surprise if you were to be looking to protect your IP in Britain. In the UK, two key pieces of legislation are the Trade Marks Act 1994 and the Trade Marks Rules 2008. Once the application has been accepted by the IPO, it will be published in the UK IP Journal.
In the UK, the notification of provisional refusal is referred to as a notice of opposition, much like when registering for an EU Trademark.
From the date of publishing, any pre-existing trademark holder may, within a period of 2 months, file a notice of opposition by filling out Form TM7, being sure to pay special attention to the grounds of opposition. This should clearly explain the reasons for which you are opposing the trademark registration – whenever reinforced by sound legal arguments, even better. The IPO registrar would then communicate this notice to the applicant.
The applicant will then have to file a counterstatement through Form TM8 within 2 months of the Notification Date. However, if both parties agree, they may opt-in for a ‘cooling-off period’ of 9 months, which can be extended another 9 months through Form TM9c, also within 2 months of the date of notification. This period would give the parties time to negotiate with each other and come to some sort of amicable agreement. If unsuccessful, the applicant files Form TM8 and the procedure continues. For the opponent, Form TM9t would be the corresponding form to end the cooling-off period.
Differences according to the type of opposition
Depending on the type of opposition made, you will then enter Evidence Rounds or receive Preliminary Indications.
Provisional Refusal: Preliminary Indications
If the notice of opposition results in Preliminary Indications, the Registrar will examine the case and explain to the parties what the most likely outcome will be upon reviewing the evidence. It should be noted that either party can withdraw their application or opposition at any time. If, however, one of the parties is still wanting to pursue their trademark claim, they may file Form TM53 within one month of receiving the Preliminary Indications, which will then initiate the Evidence Rounds.
For the Evidence Rounds, the opponent has 2-3 months (extendable if they convince the Registrar) to file their evidence-in-chief, starting from the date the opponent received Form TM8. This is the main legal basis of your claim against the applicant, where you may also be requested to submit evidence proving that you have been and still are using your Trademark.
Once filed in its entirety, the applicant now has 2-3 months (extendable if they convince the Registrar) to do the same, legally backing their trademark application and its validity. The opponent then has another 2 months to do respond to the applicant’s counterstatement.
The case will then be reviewed by the IPO and, if requested by either of the parties, a Hearing may be called, where the two parties argue their case before the IPO. The IPO will give their decision and that will be the end of the administrative proceedings.
However, if the final decision was unfavourable to you, it is still possible to appeal the decision. The type of appeal and the national entity responsible for hearing the appeal will vary greatly depending on the specific decision.
To give one example, if you are the applicant appealing against an unfavourable decision that has ultimately rejected your trademark application, you can submit Form TM55 within 28 days of the decision in question. This, however, might not be the right procedure for you.
If you would like to speak with a lawyer experienced in these proceedings in order to have the best chance possible of winning your claim, please do get in touch.Read More
When filing for an EU Trademark to protect your brand, you might receive a Notice of Opposition from the EUIPO. You might be worried about this. Maybe you’re asking yourself: What is a notice of opposition? What can I do to register my trademark now? How can I make sure that my brand is protected in the EU? In this article, we will explain what a Notice of Opposition is and how to deal with it to ensure that you protect your IP.
First, let’s remind ourselves of the application process for EU trademarks.
Recap of EU Trademark Application Process
We must remember that once you have sent your application away, the EUIPO examiner will analyze it and look for any problems. If provisionally approved, your application will be published in the EU Trade Marks Bulletin for all to see. Any party that already owns a registered trademark now has 3 months to file a Notice of Opposition, which will prevent you from being granted protection for your trademark.
What is a Notice of Opposition?
A Notice of Opposition filed by a preregistered EU trademark holder is a claim to the EUIPO that your future trademark infringes on their pre-existing trademark, or is too similar and could cause confusion. This must be done by the opposing party within 3 months of publication in the EU Trade Marks Bulletin.
Once the filing has been completed, and the opposing party has paid the corresponding fees, the Opposition Division of the EUIPO will examine the Notice and determine its admissibility. This admissibility test is conducted in accordance with the EU Trademark Regulation. If it passes the test, you will be advised of the Notice and the next phase of the procedure will begin.
What can I do against a Notice of Opposition?
In order to go against a Notice of Opposition, you must first know the procedure that will be followed. Firstly, there will be a 2-month period in which you may negotiate with the opposing party to try to come to some sort of arrangement. If unsuccessful, you will then have to argue before the EUIPO. These are known as the cooling-off period and the adversarial stage.
Once you have been informed of the Notice of Opposition, a 2-month period begins in which you and the opposing party may attempt to reach a friendly settlement. This is known as the ‘cooling-off’ period. If you are able to reach an agreement with the opposing party, then whatever you agree shall be established and neither side will have to pay any costs for further phases of the procedure. If, however, you are unable to come to an agreement, the adversarial stage shall begin in which you must argue with the opposing party before the EUIPO as to why your trademark should be granted protection and, more importantly, why it is not infringing on the pre-existing trademark, nor is so similar that it would cause confusion.
In this next stage, the opposing party must complete his opposition filing within 2 months of the end of the cooling-off period – the Notice of Opposition was merely provisional. Here, the opposing party will include all evidence that supports his case, as well as proving that the IP rights he is invoking from his trademark truly exist and are valid. For an extensive description of what the opposing party must file and the requirements for doing so, check the Guidelines for Examination in the Office.
Responding to the Notice of Opposition
Proof of Use
In responding to the opposition, in the case that you believe the opposing party may very well have a registered trademark, but is not actually using it, you may request proof of use. This requires the opposing party to submit additional documentation that proves that he is actively using his trademark in a commercial environment. It is essential that every trademark owner is aware that it’s using it or lose it when it comes to opposition proceedings.
Restrictions of your Trademark Application
When filing the application to register your trademark, you will have had to specify which goods and services are traded under the brand. As this could be the grounds for the Opposition in the first place, you may also decide to restrict your application in order to limit the goods and services you provide under that brand, to prevent any potential infringement of the opposing party’s protection. This would only work in specific cases in which you and the opposing party are operating in similar or overlapping sectors. It is important to mention here that the EUIPO will not accept restrictions that are conditional. The restriction must be absolute and unconditional.
Formulate a Strong Legal Argument
Make a strong legal argument behind why your trademark application is acceptable may seem rather obvious, but it is much easier said than done. There is a reason that lawyers dedicate their entire professional lives to IP law. It is an area of the law that is always changing and evolving, not to mention that it has the potential to be incredibly subjective, given that a key factor in a EUIPO decision is how similar it looks compared to the pre-existing trademark.
If you want to have the best chances at a successful trademark application, it is highly recommended to hire the services of an experienced IP lawyer to go through the process with you. At Moeller IP, we have been practicing solely IP law for nearly 100 years across the world, and there is still more to do. If you would like to clarify some doubts, please don’t hesitate to contact us right away.Read More
Filing for an EU Trademark is a wise decision if you want to protect your brand across the European Union. It is a valuable tool for ensuring that no one copies your products and hard-earned brand image.
If you need help or advice to register your trademark, our specialized trademark lawyer will be delighted to help you.
In this article, you will find out what the requirements are to get an EU Trademark, the scope of protection, the application process, as well as other relevant practical aspects to take into account throughout the process.
What is an EU Trademark and am I able to get one?
A registered trademark grants you exclusive rights over “distinctive signs”, which include the following concepts:
- Packaging of goods
- Smells (with specific requirements which shall not be explored here. )
A single trademark can protect one or a variety of these concepts all at once, as long as these concepts come together to create a distinctive sign that identifies your brand and differentiates it from others.
Scope and duration of IP protection
An EU Trademark will protect your brand across all EU countries for 10 years before it must be renewed. Information relevant to renewal can be found below in the section titled “IP Monitoring and TM Renewal”.
How can I apply for an EU Trademark?
Now that we have covered the definition of a registered trademark in the EU and its scope, we shall now cover the application process, which must be conducted through the EUIPO (European Union Intellectual Property Office).
The application process can be split up into 5 steps:
- Trademark Search
- File the EUIPO Trademark Application
- Examination Period
- Trademark Issuance
For the purpose of giving an example, we shall go through the TM application procedure under the presumption that you want to register a logo as a trademark in the EU.
Step 1: Trademark Search
Before filing your application, it is wise to first check if your logo is not already registered. This search can be done free of charge through eSearch plus and TMview. In these portals, you can search both with text and by dragging and dropping an image of your logo into the search bar.
Once you have found that your logo is distinguishable from those already registered, you can proceed to start the EUIPO application process.
Step 2: File the EUIPO Trademark Application
The easiest way to start the application process is online through the official EUIPO website. Here, you will find two options.
The Fast Track option is the most efficient way of protecting your brand as quickly as possible. On average, these applications are processed 50% faster and take just 3 weeks to be published. This would be recommended for most trademarks and requires that payment be made at the very beginning – the examination period cannot begin until the payment (850€) has been received.
The Fast Track option is a simple 5 step process that the website takes you through. An informative explanation of the 5 steps can be found here. An important aspect to consider is the input of the goods and services you will provide under this trademark. If you are providing goods and services in various industries or sectors, and therefore need to include several classifications, you will have a higher risk of a problematic application. Fortunately, the EUIPO have created a Goods & Services builder to help you, which can be found here.
The Advanced Form should only be used for more complex applications involving a customized goods and services submission, a collective mark, an international trademark transformation, or use more than one language in your application.
Step 3: Examination Period
Once filed, an EUIPO examiner will review your trademark application and within one month will inform you if there have been any issues. This could be an innocent mistake in the form, which is easily fixed, or a concern regarding the distinctiveness of the logo, for example.
Most issues that arise are often innocent mistakes. In this case, you have two months to correct any problems and move forward with the trademark application procedure.
Step 4: Trademark Publication
Once provisionally approved, your trademark will be published in the EU Trademark Bulletin. This will be published for three months, during which time third parties may review your mark and, if they believe that it is too similar or is a copy of their trademark, they can file a notice of opposition. In this case, your application could be delayed for more than 2 years given the length of the opposition procedure. [If your application has been opposed by another party, learn how to overcome this here.]
Step 5: Trademark Issuance
If no third parties have filed oppositions and your application is in order, congratulations! Your trademark will be approved by the EUIPO and within 6 months of publication, you will receive a registration certificate. This is a document that proves your exclusive legal right to use your trademark throughout the European Union. But it isn’t over yet…
Follow-up: IP Monitoring and TM Renewal
Just because you have the IP rights protecting your brand with your shiny new trademark, that doesn’t mean that your brand is free from risk. It is now up to you to ensure that nobody else tries to use your brand for their own commercial gain.
In order to facilitate the monitoring and continued protection of your IP, we have partnered with [insert partner’s name here with a link] to ensure that you don’t have to worry about this part of the process.
Don’t forget that your trademark is only protected through EUIPO for 10 years. At the end of this period, you must file for a renewal. It would be wise to carefully manage this or hire an IP lawyer to take charge since the EUIPO will not remind you when your protection is ending.
Conclusion about EU Trademark
We hope that you now feel much more comfortable with regard to your trademark application. However, if you are wanting to protect your IP in more countries than just the EU, there is another procedure to register an International Trademark through the WIPO (World Intellectual Property Organization) that allows you to protect your brand across the world. You can learn “How to register and international trade mark in 3 steps“. If you have any doubts, please don’t hesitate to get in touch with one of our experienced IP specialists.Read More