Trademark

Amendments to the Trademarks Legislation

By Mariano Tabanera

We live in a dynamic reality, and in no area is that more evident than in commercial law, which constantly adapts to the new practices and requirements of an ever-changing world market.

With the backdrop of the globalized marketplace in mind, the Mexican Government has recently approved a series of amendments to the IP Law, which will be effective as of August 10, 2018. There are several amendments in relation to trademarks that will change how we are used to working in this country: The very definition of what a trademark is has changed, and although the essence is still the same, it can now be constituted by any sign perceived by the senses that may identify or define a product or service. The text now allows for the registration of holographic signs, sounds and smells, which were previously barred from registration. Trade dress and certification mark registrations are also included in the new text.

A new requirement has been included, as a declaration of effective use will have to be filed during the third year of registration. If this is not done, the registration will expire. No extension is possible. This also applies for renewals: In …

Can registration of a trademark be challenged?

By Maria Sol Porro

Last March the Constitutional Court of Peru, faced with a conflict related to the rejection of the registration of a trademark, established that the registration has no direct constitutional support based on the right to intellectual creation or the right to the protection of intellectual creation.

The above-mentioned dispute was originated because of the registration of the “G-Kristal” brand by import and export company, Goldsun before the Peruvian Trademark Office. Once the registration of the mark was accepted by the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), the company Backus and Johnston S.A. initiated a process of challenging the administrative resolution in an attempt to revoke the above mentioned registration based on its brand “Cristal.” In response to this request, the Supreme Court decided to revoke the registration by the INDECOPI, rejecting the registration of the “G-Kristal” mark, in finding that there are notable similarities between the “Cristal” and “G-Kristal” brands that might confuse the consumers.

Faced with this decision, Goldsun filed a constitutional judiciary protection order to reverse this decision. The First Constitutional body, in this case the Review Chamber, upheld the decision of the Supreme Court to …

Surprise decision on Steve Jobs trademark

by Mariano Tabanera

The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype:

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under …

There’s no confusing Messi

By Mariano Tabanera

Lionel Andrés Messi Cuccittini, one of the World’s best soccer players has now yet another cause for celebration, as he has now been allowed to register his own trademark for selling sports equipment and clothing.

Messi filed an application in August 8, 2011, to register the above trademark design. It covers classes 9, 25 and 28. This trademark received an opposition from J.M.-E.V. E HIJOS, S.R.L., owner of trademark MASSI for cycling clothes and gear, and sports related goods in general, in classes 9, 12, 18, 25, 28 and 35.

This opposition was admitted by the European Union IP Office (EUIPO), and consequently Messi’s application was rejected, arguing that MESSI and MASSI were almost identical, visually and phonetically. Needless to say, an appeal was promptly filed against this resolution.

After years of procedures, the European Union’s General Court ruled in favor of Messi, asserting that his “fame counteracts the visual and phonetic similarities” with the prior mark MASSI.

The General Court also pointed out that “The degree of similarity between the marks is not sufficiently high to accept that the relevant public may believe that the goods at issue come from the same undertaking or, as …

Simmons’ horns

by Mariano Tabanera

Over the years, we have seen and heard many different attempts at registering different trademarks.

In this occasion, Gene Simmons, famous rock star, and Kiss’ front man, has now filed an application to register the famous “Rock On” sign as a trademark, claiming it to be of his own.

In the application, filed last June 9^th, 2017, before the US Patents and Trademarks Office (see link below), Simmons claims that he first used the sign in November 14^th, 1974; this is, during the Hotter Than Hell Tour. It aims at protecting class 41 services: Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.

The application describes the sign as consisting  “…of a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” (from the application), as you can see in the image that was filed in the application before the Office.

Should this trademark be registered, it would mean that Mr. Simmons would have exclusive rights over the sign, and could consequently force other artists to cease in the use of it in their live performances, and even lead to claims for …

Venezuela PTO Faces Difficult Future

By Moeller IP Advisors

Dear Clients and Associates,

The Venezuelan Association of Industrial Property Agents (COVAPI) has issued a statement related to the suspension of services of the Autonomous Services of Intellectual Property (SAPI), who since August 28, 2018 has decided to temporarily and unilaterally suspend the provision of their usual services.

Below the text of the statement:

TO OUR ASSOCIATES, COLLEAGUES AND OTHER USERS OF THE INTELLECTUAL PROPERTY AUTONOMOUS SERVICE (SAPI)

The Venezuelan Industrial Property Agents’ Association (COVAPI) hereby informs its members, colleagues and general public that the Intellectual Property Autonomous Service (SAPI), as of August 28, 2018, has suspended to render services, motivated by certain “internal affairs”, pursuant to various official notifications issued by the entity.

This suspension of services prevents the submittal of any trademark, patent and/or copyright application, notwithstanding the fact that there are three (3) IP Bulletins currently in force which generate several recourses that must be actioned by the owners of these intangibles and who are unable to do so, thereby negating their right of defense and request for protection of their intellectual rights.

COVAPI has already sent a communication to the competent authorities expressing its concern upon the climate of uncertainty and lack …

Venezuela law changes 2018 Patents Trademarks and Designs

By Gabriel Biasella

On the 23rd of August this year, the Government of Venezuela and the SAPI local IP Authority have notified a substantial increase on administrative expenses related to IP matters, such as forms, folders, mandatory searches (when applicable), mandatory publications, annuity forms, etc. All these charges must be paid right away in local currency at the date of any presentation before registering to the SAPI (IP Authority in Venezuela). These new costs come into force at once. Changes are always immediately due in Venezuela.

These are only the administrative expenses, we expect a new note from Venezuelan authorities regarding the Official fees in the next days. We keep you updated on this.

The new expenses mentioned above are the following:

Opposing a Trademark Registration in Argentina

According to data from the Argentine Patent Office (INPI) in 2016, there were 71.020 trademark applications and 14.211 trademark oppositions, around 20% of all applications. What’s the procedure for opposing a trademark registration in Argentina?

The Argentine Trademark Law 22362 establishes that every trademark application is followed by a formal examination carried out by the INPI. After the examination, the application is published in the Trademark Bulletin (Boletín de la Dirección Nacional de Marcas). After the publication, third parties have 30 days to oppose the trademark application if they think there may be a potential infringement of their intellectual property rights.

The Opposition Proceedings

Once an opposition is filed against a trademark application, the applicant is given a one-year term from the date he is officially notified of the opposition: within this term, the applicant has to obtain the withdrawal of the opposition through direct negotiations with the opponent, or file proceedings to the Argentine Federal Courts.

The difference with other legal systems is apparent: the INPI is neither allowed to decide on the merit of the opposition, nor can it provide advice to the parties. The opposition procedure takes place between the parties or can ultimately be referred to …

Why It Is Important to Register Your Trademark

Companies, especially SMEs and newly incorporated firms, tend to forget about registering their own trademark.

One of the main reasons is the common misconception that registering the company in the trade register, or even just securing a domain name, would be enough to prevent competitors from using the same name. Furthermore, many companies consider the registration as a cost that can be postponed – until something gets wrong. Just a few consider the trademark registration as an investment, that is relatively cheap compared to the strong degree of protection it offers to companies’ most valuable asset: their brand.

Is it really necessary to register your trademark?

In all major South American jurisdictions, some sort of protection is granted to the company whose trademark has not been registered but has been used for some time. However, this protection is limited and only temporary.

Brazilian Law No. 9.279/96 states, for instance, that “any person who, in good faith, on the priority date or the filing date of the application, was using for at least six months in Brazil an identical or similar mark to distinguish or certify identical, similar or related products or services shall enjoy a right of precedence in registration.…

Can you trademark a color or a smell?

Think of the peculiar fragrance of Chanel 5 or of the distinctive brown color of the UPS trucks. You would certainly not deny that these features constitute an important part of their brands, as much as their logo. Sometimes, like in the case of Chanel, they are not just part of the brand but they are also the product itself.

Nevertheless, non-conventional trademarks seem to be at the forefront of IP law. Scents and colors have just started receiving protection and not every legal system grants the same degree of protection.

Scent marks

The problem with registering scent trademarks lies in the fact that the definition of odor is quite subjective and therefore open to interpretation. On the one hand, human perceptions of scents can vary subjectively; on the other hand, we have limited means to convey the distinctiveness of a scent with words.  So for instance, the description of an  “aldehydic top note from aldehydes, bergamot, lemon and neroli” which came with the trademark application of Chanel 5, says little or nothing of the scent, unless it’s accompanied by a sample that can be smelled.

Brazil excludes the registration of olfactory marks: under law No. 9.279/96 only trademarks that …