Provisional Refusals Under the Madrid Protocol: Country by Country Guide – France and Spain

By Moeller IP Team.

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.

Provisional Refusals 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.

Notice of Opposition

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:

1. The INPI finds that the supposedly pre-existing French trademark was never registered
2. One of the parties requests a suspension due to a claim pending before the courts
3. 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.

Provisional Refusals Spain

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.

Notice of Opposition 

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.

Provisional Refusals under the Madrid Protocol: Country by Country Guide – EU and UK

By Moeller IP Team.

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.

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.

What is a Provisional Refusal Opposing an International Trademark Registration and What Can I do?

By Moeller IP Team. 

After jumping through all the hoops to register your international trademark, filing the application, and following various quick guides on how to do so, it can be quite concerning to receive a notification of provisional refusal, stating that your trademark, your brand, has hit an obstacle in being protected.

What can I do to protect my IP now? you might be thinking. In this article, we will go over what a provisional refusal is, why it was most likely issued, and what you can do to oppose it and protect your brand.

International TM Registration Recap

The first thing to remember is the process of international trademark registration. After being initially approved by the WIPO, the notification is then sent out to all national trademark offices belonging to Contracting Parties of the Madrid Protocol. The national offices now have up to 12 months to grant or refuse protection (18 months in certain cases). If they refuse, they must send a Notification of Provisional Refusal to the WIPO, where you will soon after receiving news of it through the Madrid Monitor. It will probably look something like this.

It is important to note that it is not a final decision, but instead, the Office must indicate the reasons for why it could likely get refused. This could be from either a negative examination by the Office itself or due to an opposition from a third party. Such an opposition will most likely be from a local company, a preregistered TM holder, that believes that your trademark is infringing upon theirs, or is too similar to their own and could get confused.

It should be noted that this is a provisional refusal by opposition, which is different from an ex officio refusal, which occurs when the national office finds a fault in the application and decides to refuse protection of their own accord.

What can I do against a provisional refusal?

The next step will depend upon which country’s IP office put forward the provisional refusal. Each national office has its own specific procedure to deal with the matter.

All the necessary details should be included in the notification of provisional refusal you received. These details would likely include the grounds for the provisional refusal, the time period in which you must reply to the refusal and request a review/appeal, to whom you should direct such reply, and if you need to hire a local attorney in that country to assist you with the procedure.

If your request for review and appeal is accepted by the national IP office, you will likely have your trademark application compared with an already existing trademark registered nationally in that country.

Depending on what exactly you are wanting to register, the national IP office will compare the shapes, colors, words, and letters included, as well as the similarity of the service/good in relation to the pre-existing trademark, also taking into account the sectorial similarities if any exist. This process may take many months to come to its conclusion, however, every national office has its own rules and deadlines, so you should be very aware of the specific situation of every country.
To learn more about a specific country’s provisional refusal rules and procedures, take a look at our country-by-country guide that will take you through everything you need to know. EU & UK Guide. China & USA Guide. Brazil & Germany Spain & France.

Replying to a provisional refusal

Replying to a provisional refusal will often mean that you will have to convince the national office or a court of appeals why your trademark is sufficiently different from an already existing one in order to be granted protection of your IP. To do so effectively requires not only a strong argument regarding the differentiation of the trademark but also a comprehensive understanding of the legislation and the case-law of that country. Therefore, it is highly recommended that if you receive a notification of provisional refusal regarding your international trademark registration, that you should hire an experienced IP lawyer to help you in the process.

If you are wanting to reply to a provisional refusal, we have vast experience in these procedures and would be more than happy to explain the situation to you and see how we could help out. Contact us!

WIPO: Madrid Information Notice – Change in the Amounts of the Individual Fee: Brazil

By Moeller IP Team.

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 trademarks@moellerip.com

How to Register an International Trademark: 3 Step Guide and other Practical Concerns in 2020

By Moeller IP Team.

Knowing how to register an international trademark is necessary if you operate internationally and want to protect your brand. It is the best way to ensure that the time you spent creating your brand image does not go to waste or copied by others. The protection of international trademarks is governed by the Madrid System, composed by the Madrid Agreement and the Madrid Protocol.

By following the Madrid System, you can protect your IP across the 122 countries that currently agree to mutually protect each other’s nationals’ trademarks – these countries are known as the Madrid Union.

Requirements to register an International Trademark

The requirements for an international trademark are essentially the same as for national filings. In fact, to receive international protection of your brand, you must first go through one of the national Trademark Offices of a Contracting State to the Madrid System, as we will see later on. First though, a quick recap of what can be protected under this system:

• Logos
• Names
• Images
• Colours
• Patterns
• Shapes
• Packaging of goods
• Sounds
• Smells (with specific requirements which shall not be explored here.)

However, it should be noted that in order to file for international protection, you must be either:

1. A citizen of a Contracting State to the Madrid System
2. A legal entity resident in a Contracting State
3. A legal entity with a real and effective industrial or commercial establishment in a Contracting State

Scope and duration of IP protection

An International Trademark will protect your brand for 10 years. After this 10-year period, you can file for a renewal, details of which will be covered later in the section titled “Follow up: IP Monitoring and TM Renewal”.

The number of countries in which it will be protected will depend entirely on your filing and where you decide to invest resources in brand protection. You can always request to add more countries to the trademark at a later date through a Territorial Expansion Application, so don’t worry if you want to start small and increase protection over time. This will cost 300 Swiss francs (CHF) plus 100 CHF per additional country. There can also be a variable element to this fee. To be sure, check out WIPO’s Fee Calculator.

How can I apply for an International Trademark?

First and foremost, to register for a trademark internationally, you must apply to a national trademark office pertaining to a Contracting State. You do not apply directly to WIPO (World Intellectual Property Organization).

Steps of the Trademark Registration: 

1. Apply to the appropriate National Trademark Office
2. Examination of trademark application by the WIPO
3. Examination of trademark application by National Trademark Office of each requested country

Step 1: Apply to the appropriate National Trademark Office

The first step of the process entails applying to the right National Trademark Office for you. This is relatively simple to find out through a quick Google search. Below is a list of a few of the national offices with links to their websites.

• UK: IPO (Intellectual Property Office)
• Germany: DPMA (Deutsches Patent- und Markenamt)
• France: INPI (Institut National de la Propriété Industrielle)
• Spain: OEPM (Oficina Española de Patentes y Marcas)
• Italy: UIBM (Ufficio Italiano Brevetti e Marchi)

In applying to this national office, you will have to fill in the Form MM2. Once filed, the national office will examine the application. If there are no defects to the filing, they will then pass your application to the WIPO for further examination at an international level. This will usually take up to 2 months.

Step 2: Examination of trademark application by the WIPO

Once approved by the national office, the WIPO will then take their turn to examine your application. This examination is mainly to ensure that there are no defects in the application and that you are a legitimate applicant that fulfills the requirements. Upon approval, it will be published in the WIPO’s International Trademark Gazette, and the application will then be forwarded to the national offices of every requested country.

Step 3: Examination of trademark application by the National Trademark Office of each requested country

The international trademark registration procedure essentially has the same effect as if you were to apply to register a national trademark in all of the countries’ requested. Therefore, at this stage, the relevant national trademark offices will examine your application for any faults and, importantly, any potential IP conflicts with already registered trademarks in that country.

Usually, an important part of the national procedure is to publish the application in their national gazette or bulletin and allow a time period for other trademark holders to voice their concerns. If there are any conflicts with pre-registered trademarks, the national office has one year to communicate a notification of provisional refusal – this time period can occasionally be extended to 18 months or longer.

If there is no notification of such a provisional refusal, the trademark is granted and your brand is now officially protected in that country. Congratulations!

Follow up: IP Monitoring and TM renewal

IP Monitoring

Now that you officially have a registered international trademark, you might feel like the job is over. That is unfortunately not the case. There are many companies and individuals out there who might want to copy your brand and use it for their own personal or commercial gain.

Therefore, to ensure that your hard work has not been for nothing, it is of utmost importance to establish an IP monitoring program. Fortunately, we have partnered with [insert partner’s name here with a link] so that you can rest easy knowing that you are protecting your trademark and your brand image.

Trademark Renewal

It is also essential to remember that your international trademark is only protected for 10 years. Once this time period has elapsed, you need to file for a renewal. The WIPO and the vast majority of national trademark offices do not send out automatic reminders, so you should either carefully manage this or hire a trustworthy IP lawyer to ensure that you don’t wake up to find that you have to start the procedure again.

Register an International Trademark: Conclusion

Now that you know how to apply for an international trademark, protect your brand and monitor your IP, it should be noted that the actual process can take some time. Moreover, if there are mistakes in your application or a notification of provisional refusal is communicated to the WIPO or any national trademark office, that can further complicate matters and result in lengthy delays.

If you would feel safer hiring an attorney to take you through the whole procedure, you can contact us.

Typical Brazilian Products and Services are Included in the WIPO Classifier

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Brigadeiro, cheese bread, açaí in the bowl, Minas cheese, Capoeira teaching, and Chorinho show are some 668 descriptions of new products and services typical of Brazil that, as of June 5, 2020, are part of Madrid Goods and Services Manager (MGS), a product and service classifier from the World Intellectual Property Organization (WIPO).

This is a simple and effective milestone for Brazilian Trademark Law and Industrial Property. Through easy access to these data at MGS, we seek to ensure that offices in other countries do not exclusively assign products and services that are so typical of Brazilian history and production as a brand.

In addition, the initiative is based on the fact that most of the laws in the world follow the equivalent to that determined in item VI of article 124 of Law No. 9.279 / 1996 (Industrial Property Law), which prevents the registration of descriptive signs when related to the product or service to be distinguished.

The work was an initiative of employees of the BRPto Trademark Directorate that make up the teams of the Madrid Protocol and the Product and Service Classification Commission (CCPS) in partnership with WIPO.

From around 200 of these descriptions of typical Brazilian items, which were already on the auxiliary lists of products and services prepared by CCPS since 2000, the wording has been improved to provide standardization, clarity, and the best information from the point of view foreign users.

Then, developments and expansions were made, resulting in 668 items, with translation into English. The descriptions came from extensive Commission research from a variety of sources.

Source: https://www.gov.br/inpi/pt-br/central-de-conteudo/ultimas-noticias/produtos_e_servicos_tipicos_do_brasil_entram_no_classificador_da_ompi

China Becomes Top Filer of International Patents in 2019

By José Santacroce. Partner and Head of Patent Department.

The World Intellectual Property Organization (WIPO) published on 7 April 2020 a press release summarizing the main activities of the Organization in 2019.

The highlights of the above-mentioned press release are the following:

With 58,990 applications filed in 2019 via WIPO’s Patent Cooperation Treaty (PCT) System, China ended the United States (57,840 applications in 2019) reign as the biggest user of the PCT System, a position previously held by the U.S. each year since the PCT began operations in 1978.

International patent applications filed via the PCT grew by 5.2% (265,800 applications) in 2019, while international trademark applications via the Madrid System for the International Registration of Marks increased by 5.7% (64,400 applications). Protection for industrial designs via the Hague System for the International Registration of Industrial Designs saw a 10.4% growth (21,807 designs).

International patent system, Patent Cooperation Treaty (PCT)

In 2019, the top ten users of the PCT were: China (58,990 PCT applications), the U.S (57,840), Japan (52,660), Germany (19,353), Republic of Korea (19,085), France (7,934), United Kingdom (5,786), Switzerland (4,610), Sweden (4,185) and Netherlands (4,011).

Top PCT Applicants:

For the third consecutive year, China-based telecoms giant Huawei Technologies, with 4,411 published PCT applications, was the top corporate filer in 2019. It was followed by:

• Mitsubishi Electric Corp. of Japan (2,661);
• Samsung Electronics of the Republic of Korea (2,334);
• Qualcomm Inc. of the U.S. (2,127);
• Guang Dong Oppo Mobile Telecommunications of China (1,927);
• Boe Technology Group of China (1,813);
• Ericsson of Sweden (1,698);
• Ping An Technology of China (1,691);
• Robert Bosch of Germany (1,687);
• LG Electronics of the Republic of Korea (1,646);
• LG Chem of the Republic of Korea (1,624);
• Panasonic of Japan (1,567);
• Sony (1,566);
• Hewlett-Packard of U.S. (1,507) and
• Microsoft of U.S. (1,370).

Top technologies:

Among fields of technology, computer technology (8.7% of total) accounted for the largest share of published PCT applications, followed by digital communication (7.7%), electrical machinery (7%), medical technology (6.9%) and measurement (4.7%). Among the top 10 technologies, semiconductors (+12%) and computer technology (+11.9%) were the fields with the highest rates of growth in 2019.

International trademark system (Madrid System)

U.S.-based applicants (10,087) filed the largest number of international trademark applications using WIPO’s Madrid System in 2019, followed by those located in Germany (7,700), China (6,339), France (4,437), Switzerland (3,729), United Kingdom (3,460), Japan (3,160), Italy (2,649), Australia (2,094) and Turkey (1,980).

Top Madrid filers:

L’Oréal of France with 189 applications headed the list of top filers, followed by Novartis AG of Switzerland (135), Huawei Technologies of China (131), Nirsan Connect Private Limited of India (124), Rigo Trading of Luxembourg (103), Apple of U.S. (101), Shiseido of Japan (84), BMW of Germany (78), Henkel of Germany (77) and Richter Gedeon of Hungary (69).

Top classes:

The most-specified class in international applications – computers and electronics – accounted for 10.1% of the total, followed by services for business (8.3%) and technological services (6.7%). Among the top 10 classes, pharmaceuticals and other preparations for medical purposes (+12.4%), and services in the area of education, training, entertainment, sporting and cultural activities (+9.6%) saw the fastest growth.

International design system (Hague System)

The number of designs contained in applications filed under the Hague System grew by 10.4% in 2019, reaching a record 21,807 designs.

Germany, with 4,487 designs, continued to be the largest user of the international design system. The Republic of Korea (2,736 designs) surpassed Switzerland (2,178) to become the second largest users of the Hague System in 2019. Italy and the Netherlands ranked fourth and fifth, respectively, with 1,994 and 1,376 designs.

Top Hague filers:

Samsung Electronics of the Republic of Korea with 929 designs in published registrations headed the list of top filers, followed by Fonkel Meubel marketing of the Netherlands (859), LG Electronics of the Republic of Korea (598), Volkswagen of Germany (536) and Procter & Gamble of the U.S. (410).

Top fields:

Designs related to recording and communication equipment (13.6%) accounted for the largest share of total designs in 2019 followed by furnishing (10.1%); means of transport (9.4%); packages and containers (6.4%); and lighting apparatus (6.2%). Among the top 10 classes, recording and communication equipment (+46.4%) and clothing (+35.1) saw the fastest growth.

Source: www.wipo.org

Brazil and the Madrid Protocol: What You Should Know

By Vivien Racy. Lawyer and Client Relationship Manager.

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?

¿Local representative?

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.

International Registrations and Provisional Refusals

By Mariano Tabanera, Senior Trademark Lawyer

International Registrations

Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.

In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.

Provisional Refusals

However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.

When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.

In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to reply to it, including whichever argumentation, agreements and limitations the applicant may deem sufficient to overcome the objection.

Recent amendement to WIPO

Unfortunately, due to a recent amendment to WIPO regulations, any limitation or clarification to the applications must be made through WIPO, and not directly before the national Offices. As a result, the reply to the objection would require a higher expense, both in time and money.

In light of an amendment to the Mexican Trademarks Law, which came into effect last August 2018, coexistence agreements are now binding for the Examiners, as long as the trademarks are not identical. If the owners of the marks consider that there is no risk of confusion in case of coexistence, the IP Office is compelled to admit said coexistence.

Registering Trademarks through the Madrid Protocol

Despite the fact that registering trademarks through the Madrid Protocol is indeed a simpler procedure, the implications and possible consequences of this must be taken in consideration, and the necessary preventive measures (availability searches, possible negative connotations of words or designs, negotiations, agreements, limitations in scopes of protection) should be undertaken.

Lastly, it must be mentioned that, despite the simpler application procedure, Madrid Protocol designations tend to be longer procedures, as there is an international and a national stage, whereas national applications just have the latter.

All in all, designations of international registrations through Madrid Protocol are really useful, and they do simplify the registration procedure for applicants that want to protect their brands worldwide, but the national consequences must be taken in consideration. The professional advice of an IP expert in the region is always recommended in order to avoid conflict and dilations. Contact us to register a trademark without problems.

Source: www.inpi.gov.br/

Overview of IP filings in Latin America over the Last Decade

By Marta Garcia

In December 2018, the World Intellectual Property Organization (WIPO) published its annual World Intellectual Property Indicators 2018 report, which shows IP statistics worldwide. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures, trademark filings totalled 12.39 million, up 26.8% on 2016, and industrial design filing activity exceeded 1.24 million. China recorded the highest application volume for each of these IP rights.

Regarding patent filings in the Latin American and the Caribbean region, WIPO´s study report a slight decrease (-0.1%) on the average annual growth from 2007 to 2017, with 57,600 patents filed in 2017.

On the other hand, trademark filings in the region showed a 3.3% increase on the average annual growth over the same period, reaching 715,900 applications in 2017. This average percentage annual growth was similar to that for North America (3.9%) and higher to the one in Europe (0.2%).

Industrial design filings during the 2007-2017 period in the Latin American and the Caribbean region also shows a slight average annual increase (0.6%), with 15,500 filings in 2017.

Below are IP data for the period 2007-2018 according to the statistics published by the corresponding PTOs of the top five largest Latin American economies: Brazil, Mexico, Argentina, Colombia and Chile.

Patents

From 2007 to 2018, patent filings in Brazil have increased 15% overall. However, the number of applications has fallen for five consecutive years, with the decline in non-resident applications being the main driver for the decrease.  From 2017 to 2018, there was a slight reduction from 28,667 to 27,551 (-3.9%) in patent filings, although there was a large increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018. Additionally, in 2018 the patent backlog was reduced by 7.4% with respect to 2017.

In 2018, applications from the U.S accounted for 30% of the total patent filings, followed by Brazil (20%), Germany (8%) and Japan (7%).

Overview of IP filings in Latin America over the Last Decade

Mexico has experienced a slight overall decrease (1%) in patent filings from 2007 to 2018, with 16,424 applications filed in 2018. Regarding patent grants, 8,921 applications were granted in 2018, 5% more than in 2017.

Applicants from the U.S. accounted for 44% of the total applications in 2018, followed by Mexico, Germany and Japan (7% each).

Patent filings in Argentina have also experienced a decrease over the last years, with 3,443 applications filed in 2017. Interestingly, during the 2016-2017 period, there was a 56% decrease in resident applications, whereas non-resident applications slightly increased (4%). Regarding patent grants, these have almost doubled in the period 2008-2017, with 2,302 patents granted in 2017. No data are yet available for 2018.

Overview of IP filings in Latin America over the Last Decade

Except for a marked decrease during 2009 and 2010, patent filings in Chile have been rather steady, with a slight 7% increase from 2017 (2,892) to 2018 (3,100).

30% of the applications in 2018 were from U.S. applicants, 13% from Chile, 9% from Switzerland and 8% from Germany.

Colombia also recorded a 7% increase in patent applications from 2017 (2,049) to 2018 (2,372), and a remarkable 16% growth for the period 2007-2017. In 2017, 32% of the filings were from U.S. applicants and 25% from Colombian applicants, followed by Switzerland, Germany and France in number of applications. No data are yet available for 2018.

Trademarks

Regarding trademark applications, both Brazil and Mexico have seen an overwhelming growth during 2007-2018: applications in Brazil have increased 96% since 2007, reaching 204,419 applications in 2018, whereas in Mexico this increase went up to 103%, with 156,156 applications filed last year.

Resident filing activity has driven this growth in Brazil, with an average of 82% in resident filings during the period 2007-2018. The second country in number of trademark applications in Brazil is the U.S., whose share in 2018 was 4%. Resident filings in Mexico represented an average of 68% during the period 2007-2018. The second country in number of trademark applications in Mexico is also the U.S., with 17,449 applications (11%) filed in 2018, followed by Germany (3%).

Overview of IP filings in Latin America over the Last Decade

There has been a significant increase in trademark registrations in Brazil during the last year, from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.

Trademark registrations have increased 150% in Mexico during the period 2007-2018, rising from 49,746 registrations in 2017 to 124,023 in 2018.

Overview of IP filings in Latin America over the Last Decade

With an overall 4% increase in trademark applications in Argentina from 2007 to 2017 and 74,722 filings in 2017, resident applications represented an average percentage of 76% during the period 2007-2017.

Except for a drop in 2009, trademark filings in Chile have been rather stable, with an overall increase of 18% during the period 2007-20018 and 47,407 filings last year. Resident applications in Chile represented an average of 69% during the period 2007-2018.

Colombia has experienced a significant overall increase (73%) in the number of trademark applications during 2007-2017, with 42,725 filings in 2017. Resident applications in Colombia showed an average of 57% during the period 2007-2017. There has also been a substantial increase (71%) in trademark registrations in Colombia during 2007-2017.

Sources:   http://www.wipo.int

                    http://www.inpi.gov.br

                    https://www.gob.mx

                    http://www.inpi.gob.ar

                    https://www.inapi.cl

                    http://www.sic.gov.co