If you’ve received a notification of provisional refusal in response to your international trademark application from the French or Spanish national trademark offices, here you will discover what the procedures are to go against such a notification and fight to protect your IP in Spain and France.
In the French trademark system, the key legislative documents to keep in mind are the French IP Code and Law 2007-1544. The national French IP Office is the INPI. Once the INPI has received your application from the WIPO, it will take 6 weeks before it is published in the French Trademark Gazette. From this date, any pre-existing French trademark holder will be able to file an opposition with the Director General of the INPI.
At this point, the applicant will be notified of the opposition, its grounds, and will be granted a time period within which to respond to the opposition. This counterstatement shall be your official argument against the opposition, so make sure that your arguments are bulletproof so that they stand up well before the INPI.
Here is a good point to highlight the importance of sticking to the deadlines placed upon you by either the INPI or the French/European trademark regulations. Often, such deadlines are non-extendable, so if you do not file the correct paperwork in the time given, your application (or opposition) will fail.
From the date of filing the opposition, the INPI must, by law, make a decision and notify the parties within 6 months. If no decision has been made, then the opposition will be rejected and the trademark application successful. This 6-month time period may be suspended if one of three situations arises:
- The INPI finds that the supposedly pre-existing French trademark was never registered
- One of the parties requests a suspension due to a claim pending before the courts
- Both parties request a suspension of three months, which can be renewed if both parties agree. This would often be due to the parties attempting to reconcile their differences and come to some sort of amicable agreement.
The first decision received will be a draft decision – technically a preliminary assessment of the matter – which then gives both parties the chance to submit their observations and further argue their claims within one month of receiving the draft decision. However, this opportunity to further argue your point, if the INPI has made an unfavourable draft decision, is in practice rarely effective in overturning the INPI’s initial decision.
Once the final decision has been made, there is a strict time period allowed for either party to appeal this decision to the French appellate courts. For French nationals, this time period is 1 month; for non-French nationals, this time period is 3 months. This is a crucial stage for the losing party, and it is their last real chance at protecting their IP in France.
It should be well noted that, in order to convince a judge that the INPI came to the wrong conclusions in their decision, your legal arguments must be very well-structured and coherent. Unless you are an experienced IP specialist, then it would be wise to hire a trustworthy IP lawyer to take you through the proceedings.
As one of the top European economies, with various strong industries such as tourism, it is a common territory to file for trademark protection. In Spain, the relevant legislation to be aware of is the Spanish Trademark Law, and the national IP office is the OEPM.
Once an application has passed through the OEPM and has been published in the Official IP Bulletin, any pre-existing Spanish TM holder will have 2 months to file an opposition before the OEPM. Such an opposition will have to be started by filling out Model 4104, where the opponents case will be made as to why the applicant’s trademark would infringe on his pre-existing IP right. An important feature of the opposition in Spain is ability to attach a file to the Model in which you may exhaustively reason your claim. There is no limit on space or how many words may be used, therefore an experienced IP lawyer would be very useful at this stage of the trademark opposition proceedings. However, the OEPM does recommend not to be too repetitive or unclear in this file – if you go over the top, it could do more harm than good.
There are certain requirements in order for the opposition filing to be accepted by the OEPM found in article 26 of Royal Decree 1937/2004. If the filing has some sort of irregularity, don’t worry – you will be granted 10 days to remedy any defect and carry on with the opposition proceedings.
The applicant, once having received the opposition filing, will then have 2 months to file a counterstatement to the opposition, in which they will do the same as the opponent, reasoning why their Spanish trademark should be registered. Here, it is important for the applicant to understand that they have the right to withdraw or alter their application at any time. This would be wise in the case that a pre-existing Spanish trademark provides certain goods and services that seem to overlap with the goods and services described in the initial trademark application. If the applicant believes that they can commercially operate perfectly fine under a slightly different definition of the goods and services they provide, then that would be ideal. Again, the same criteria apply as for the initial opposition filing – that it be clear and concise, without repeating your arguments for the sake of filling out the form in an extensive manner. Once filed, the OEPM will then examine the claims and make a final decision, which will be notified to the parties.
This, however, is not necessarily the end of the road. If the final decision of the OEPM is unfavorable to your claim, you may still appeal against this to the Contentious-Administrative courts within a period of 1 month from the publication of the result in the Official IP Bulletin.
It must be stressed that throughout the trademark opposition proceedings, legal clarity and coherence in your arguments are of utmost importance, whether arguing before the OEPM or the Contentious-Administrative courts. Additionally, if you are to convince a judge that the OEPM made a mistake, the legal arguments must be very strong. Unless you have a vast experience in IP law and trademark protection, then it is highly recommended to make use of a specialist IP lawyer.Read More
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.
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).
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 article, you will have received a notification of provisional refusal by a pre-registered Chinese or American TM holder who thinks your international trademark application is infringing on their IP rights. Here, we will go over the existing procedures to go against such a notification and fight to protect your IP in China and the United States.
The People’s Republic of China is not necessarily renowned for their protection of IP – in fact, more than 70% of all counterfeited goods in trade are estimated to come from China, which accounts for around 12.5% of their goods exported and 1.5% of their GDP. Nonetheless, the Chinese market is gigantic and is an obvious target for many growing companies. Fortunately, they are signatories to the Madrid Protocol and there are certain mechanisms to protect trademarks in China. The most relevant national law to be aware of is the Chinese Trademark Law, and the relevant national TM office is the Chinese National Intellectual Property Administration (CNIPA), or Chinese Trademark Office.
Regarding the procedure, once the international trademark application has been published in the WIPO International TM Gazette, any pre-existing trademark holder may file a notice of opposition within 3 months, starting from one month after the publication date. There will be a further 3-month period to submit relevant documentation.
Once the applicant has received the notification of provisional refusal, they then have 30 days to respond to the opposition. At this point, the applicant must appoint a local representative in order to respond to the opposition. The applicant will also have a 3-month period in order to submit all other documentation relevant to their claim.
It is of utmost importance to understand that the opposition and the response to the opposition shall be the official legal claims of both parties and shall be reviewed by the CNIPA once all documentation has been submitted. These claims should be well-drafted with a coherent structure and a strong legal basis if you are hoping to have the best chances possible to receive a favorable outcome from the Chinese Trademark Office.
We should also take note of the ex officio refusal by the Chinese Trademark Office itself, where they have 12 months to exercise their right of refusal (in some cases 18 months). In this scenario, the trademark applicant will have 15 days to respond to the notice from the date of receipt, where the application shall be returned to the adjudication board of the Chinese Trademark Office for a second review. The CNIPA will then have 9 months to review the application again and will respond to the applicant in writing, declaring their final decision.
If the applicant, either under ex officio provisional refusal or through refusal by opposition, receives a final decision that is unfavorable, they will have 30 days to appeal the decision of the Chinese Trademark Office to the national courts of China. Again, it cannot be understated, to convince a judge that the national trademark office made the wrong decision will require a strong legal argument, something which only experienced IP lawyers can be trusted to construct.
If you would like help relating to an IP matter in China, feel free to get in touch with us.
United States of America
Given that the USA is home to some of the largest companies in the world, as well as being the world’s largest economy, it would be no surprise to find a growing company looking to protect their IP in the United States. The key piece of legislation to be aware of is the Trademark Act, and the relevant TM office is the US Patents and Trademarks Office (USPTO).
Once the trademark application is received by the USPTO, and once provisionally approved by the Director, the application will be published in the Official Gazette of the USPTO. From that date, any pre-registered TM holders may file an opposition to the application within 30 days if they believe that the applicant’s new trademark would infringe on their own. This time period may be extended if requested in writing to the Director.
If this notice of opposition is accepted by the USPTO, they will notify the applicant and shall set up a Trademark Trial and Appeal Board in order to come to a final decision on the matter. The Board shall issue an institution order, which is a document that outlines the details of the opposition procedure. This shall be done electronically, and will typically set out a time frame of 40 days for the applicant to respond to the opposition, 6 months for discovery, and then the periods in which the parties can make their testimony – 30 days for the opponent, 30 days for the applicant, and 15 days for the opponent’s rebuttal.
In the applicant’s response to the opposition, they must clearly outline the legal basis for their claim as to why their trademark should be accepted. As stressed previously, it is essential that all arguments submitted to the Board must be based on strong, coherent legal claims – it would be highly recommended hiring an experienced IP lawyer for this.
Once the applicant has answered the opposition, the Discovery period begins, in which both parties may request and receive relevant information and documentation from the counterparty, including written interrogatories, document requests, depositions, and requests for admissions.
At the end of the discovery period, the final stages of the opposition proceedings shall begin. This entails the submission of briefs – mandatory for the opponent, optional (but recommended) for the applicant – which outline each party’s claims. If one of the parties requests an oral hearing, this shall be arranged, however, it should be noted that these hearing are of a summary nature – that is to say, no new evidence may be submitted, only a summary of both parties’ claims. It is common for judges to take advantage of these hearings to clarify aspects of the case that were not entirely clear in the briefs. Once finalized, the Board will make a decision regarding the admissibility of the international trademark application.
If unfavorable, either party may request a rehearing, reconsideration or modification of a decision within 1 month of the date of the decision. If unsuccessful, the losing party can still appeal to either the US Court of Appeals or it can request a brand-new trial in a District Court. A key difference between the two is the ability to introduce new evidence to the case – in the Court of Appeals, no new evidence or arguments may be submitted; in the District Courts, however, it is much more flexible and allows for the introduction of new evidence and arguments.
The US system for registering trademarks can oftentimes seem rather difficult, and just by looking at the law it can still seem unclear as to what path you should take. For any doubts, get in touch with us, and we would be happy to put your mind at ease.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 TM 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.
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. You can find out more about the appeals process here.
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
As from July 18, 2020, the amounts of the individual fee payable in respect of Brazil will change. Those amounts will be:
- 75 Swiss francs (first part) and 135 Swiss francs (second part) for each class of goods or services, when designating Brazil in an international application or subsequently;
- 193 Swiss francs for each class of goods or services, when renewing an international registration in which Brazil has been designated. Where the payment is received within the period of grace, the fee will be 292 Swiss francs for each class of goods or services.
For further information, please refer to Information Notice No. 47/2020.
Moeller IP will monitor your international TMs in the Brazilian TM Gazette for free. Please do not hesitate to contact us at any time with any doubt or questions you may have at email@example.comRead 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. 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.
If you need help or advice to register your trademark, our specialized trademark lawyer will be delighted to help you.
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. Find out more
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. For official EUIPO information regarding trademark search criteria, click here.
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: 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.
Final words about International 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
Brazilian PTO published this Tuesday (04/14), Ordinance No. 161/2020, which extends until April 30, 2020, the suspension of deadlines referred to in Ordinance No. 120 / 2020, due to administrative measures to prevent infection and the spread of COVID-19.Temporary work on teleworking for employees and employees of the Institute was also extended until the same date.
– The Ordinance applies to all processes pending at Brazilian PTO, regardless of their nature. Therefore, deadlines are suspended for all cases.
– The Ordinance also implies the interruption of the counting of the deadlines that are in progress, which will flow again for the time remaining at the end of the suspension period. In other words, the term will be counted from where it left off.
– The terms that start in this period will start counting after the end of the suspension.
– The use of term suspension is optional and the user can petition at the INPI, through the online systems, if they prefer.
By Moeller IP.
Moller IP offers the complete range of IP
“With over 90 years’ presence in the Argentine IP sphere, Moeller IP offers the complete range of IP and regulatory services throughout the entire Latin American region, with offices in São Paulo and Montevideo for Brazilian and Uruguayan patrons’ convenience. In line with its growth-focused strategy, the boutique has been expanding its data protection and enforcement branches, with the head of trademarks Victoria de Lasa Andrés supervising the latter. Combining excellent management skills with across-the-board knowledge of the IP industry, she excels at maneuvering complex IP cases and routinely leads the team to successful outcomes. By her side, the office’s commercial hand Mariano Municoy is a safe choice for trademark portfolio management, taking charge of the firm’s regional portfolios.”
Answers to Brazil and Madrid Protocol
As soon as Brazil announced its intentions of joining the Madrid Protocol many questions arise. What would be the implication for Trademarks applicants and representatives?
One question and maybe the most important at this moment and which it is not yet definitely solved, concerns the obligation of a local representative. Meaning a local registered lawyer, for the application. Despite the contradiction between the regulation of the Protocol to which Brazil is joining and the Brazilian Intellectual Property Law, this one added to the lobby of the Brazilian Bar Association and Intellectual Property Professionals, the matter is still to be decided.
Facing this impasse, it becomes vital to expedite and precise the Trademarks search before the application. Currently, the search through the system of the World Intellectual Property Organization (WIPO) is not accurate with respect to the Brazilian database. An effective and detailed search can only be carried out by qualified professionals in Brazil with complete access to the national database and information.
Once an exact search has been conducted it will be possible to guarantee the success of a new Trademark registration. Thus avoiding a costly and time-consuming subsequent procedure of oppositions.
To know more about Trademark Searches in Brazil regarding the Madrid Protocol please contact us.Read More
By Maria Sol Porro
Seventh International Congress of Intellectual Property
Last June, 7th, the Seventh International Congress of Intellectual Property called ¨Recent IP Developments in Europe¨ was held at the University of Maastricht, Netherlands, organized by the Queen Mary University of London, the Autonomous University of Madrid and the host, the University of Maastricht.
Each year different speakers of the mentioned universities attend this event in order to make brief presentations about the most recent developments in the main areas of intellectual property law in Europe. In this way, new laws, legislative proposals, notable new resolutions or recent doctrines on trademark law, patents, copyright, geographical indications, designs, etc. are analyzed and exposed.
Topics addressed at the event 2019
1- Multimedia Trademarks
They are those represented by the presence of an audiovisual file that contains the combination of image and sound. These trademarks are starting to be taken into account within the European registers, although they are usually registered as services and not as goods. However, they have two problems:
a- Having so many elements involved, often lack the distinctive character required for the trademarks.
b- Many of these brands are usually video games whose central themes often clash with morality and good manners, preventing your registration as such.
2- Packaging and trademarks
Last May, the CJEU issued a new judgment (C-642/16 Junek Europ-Vertrieb of May 17, 2018) related to the interpretation of ¨the principle of exhaustion of trademark¨ in the case of parallel imports and repackaging of products, mainly in medicines and health products.
In other words, what was analyzed is whether the owner of a trademark has the right to prevent the commercialization of a product that has his trademark, legally marketed in another EU State, when its original packaging has been modified. In the judgment, the CJEU was referred to other judicial decisions in which 5 requirements were established to consider when the exhaustion of the right of the owner of the mark takes place.
These requirements determine that the right of the owner of a mark is exhausted when the variation of the packaging does not affect the origin of the product in relation to the brand or does not cause any harm to consumers. In this case, it was considered that the owner´s right was exhausted and, therefore, the owner had no right to prevent that commercialization.
3- Artificial intelligence
The issue of Artificial intelligence has become the storm in a teacup of the patent area. Not only because it is an important point in the subject of patents, but it is a technology that involves more edges. In itself, the question arises of recognizing computers as a-inventions or b-legal entities under the law. While it is currently held that computers programmed to create objects could not be considered as “inventors”, this does not prevent the rules of the game from changing in the future.
4- Competition law, patents, and the pharmaceutical sector
In recent years, certain “questionable lawfulness” practices have become usual within the patent sector, specifically for generic drug companies, which are intended to extend the protection of these drugs and block the entry of new companies into the market.
Some of these practices aim to register small changes of the main patent before the generic one enters the market (product hopping), the indiscriminate registration of patents in order to protect a product and block competition (defensive patents), increase the protection of a patent with other minimum patents, applications which remains pending to be registered (divisional patent applications), among others.
It is against this panorama in which the European Commission emphasizes the importance of using the “Competition Law” in conjunction with the “Patent Law”. The purpose is to avoid these covert monopolies within the field of patents. Likewise, it is important to note that while markets such as the United States generally prohibit these practices, some of them are allowed in the EU. So it is substantial to determine when one is facing an allowed situation and when facing competition action unfair.
5- Online parodies and future of upload filters
The New (and controversial) article 13 of the Copyright Directive establishes a paradigm shift by determining that it will now be the platforms which will have to ensure that the content they host does not involve copyright violations. That is, services such as Facebook, Twitter or Google but also Wikipedia or GitHub will have to adopt measures and use content recognition techniques to block them directly. Therefore, it is expected that in order to avoid sanctions, platforms tend to block more content than they should.
Another controversial issue is online parodies, better known as memes. Although the exception of parody is treated differently in each country, in order to understand when we are within the limits of one it is important to consider 4 basis points:
– Who is the interlocutor.
– The type of expression.
– The context in which it is said.
– What is said.
It is clear that in the face of this scenario, certain difficulties will arise for the platforms when recognizing when they are facing a parody and when they are facing illicit content. On this point, even though the New Directive establishes the exception of mandatory parody in the EU, platforms are not encouraged to apply filters to differentiate parodies of illegal content, which will be a problem in the future.