American Region Suspension Deadlines COVID-19

By Moeller IP.

The latest update about the suspension of deadlines in the American Region Patent and Trademark Office.

Download PDF

INPI Brazil | New Extension of Deadlines in Brazil by Ordinance No. 166/2020

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

Brazilian PTO published this Tuesday (04/28), Ordinance No. 166/2020, which extends until May 15, 2020, the suspension of deadlines referred to in Ordinance No. 120 and 160/2020, due to administrative measures to prevent infection and the spread of COVID-19.

• 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.

We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.

Please do not hesitate to contact us at any time with any doubt or questions you may have.

Source: www.inpi.gov.br/noticias/inpi-prorroga-suspensao-de-prazos-e-teletrabalho-temporario-ate-15-de-maio/view

Argentinian Patent and Trademark Office Extends Suspension of Terms Determined by Resolution Nr. 34-2020

By Moeller IP. 

The Argentinian Patent and Trademark Office published the Resolution Nr 34-2020 in the Electronic Official Bulletin of April 13, 2020, introducing the following:

Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020 and 22-2020, until April 26, 2020, inclusive.

We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.

Please do not hesitate to contact us at any time with any doubt or questions you may have.

Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/227720/20200413

The three stripes controversy

By Maria Sol Porro, Trademarks Lawyer and University Professor.

Nullity of the Adidas Community trademark

Last June, the General Court of the European Union (EGC) announced one of its most resounding decisions to date. Confirmed the nullity of the Adidas Community trademark, consisting of three parallel bands. This is due to the fact that the German company did not demonstrate the distinctive character of it throughout the territory of the European Union (EU).

The legal battle for the three stripes is part of the dispute that Adidas and the Belgian company, Shoe Branding Europe BVBA, began in 2009, when the latter tried to register their two lines against the European Union. In this case, Adidas objected before de European Union Intellectual Property Office (EUIPO) on the grounds that they closely resembled its three parallel bands. Based on this claim, the EUIPO denied registration to the Belgian company on two occasions (2015 and 2016). It is important to remark that Adidas had not proceeded to register its three lines before the EU until this point.

Once this judicial contest was won, Adidas decided to request in December 2013 the registration of the famous three parallel bands as a community trademark before EUIPO, which gave its consent. However, on this occasion, it was BVBA who opposed the decision based on the denial of their two lines. This opposition led EUIPO to change its mind and cancel Adidas’ registration, arguing that this sign does not have the «distinctive character» required to a trademark.

Subsequently, the decision was appealed to the EGC, based in Luxembourg, who confirmed in its resolution the cancelation decided by EUIPO, considering that Adidas had not been able to demonstrate that the use of the three stripes has distinctive character in the entire European Union to identify the brand. This last decision of the EGC is outstanding since it is contradictory to the decision of the mentioned case of BVBA in 2009, in which the Court did consider that Adidas had managed to demonstrate the notoriety of its design of the three stripes to deny the registration of the two stripes of the Belgian company.

Against this background and the fall of its shares by more than 1% on the German stock market, Adidas still has the option to appeal the decision of the EGC before the Court of Justice of the European Union (CJEU), having only two months of the term. Then, it will be necessary to wait to see if the German company manages to revert this situation or if the Belgian company, BVBA, will hang Adidas with its own rope.

Source: www.elespectador.com

Brazilian Senate Approves Special Protection Bill of «High Reputation» Brands

By Carlos Cavalcanti, Managing Partner Moeller IP Brazil

The Brazilian Senate Plenary approved on Tuesday (2) the bill that creates rules for special protection of «high reputation» brands. PLC 86/2015 allows the holder of an industrial trademark to request the Brazilian PTO (Inpi) to recognize this title at any time. The text has been modified and will have to be returned to the Chamber of Deputies.

«High reputation» is a classification that guarantees a brand protection in all markets, not just the one in which it operates. With this recognition, no other company can be registered with the same name, even if it is from another branch. Inpi currently recognizes 41 «high reputation» brands.

PLC 86/2015 regulates the Industrial Property Law (Law 9.279 / 96) to specify that «high reputation» may be requested at any time. Currently, only an INPI internal standard addresses this issue. According to the rule, the interested parties must wait for a third party to request the registration of the same mark in another branch.

The text also determines that, in case of approval of the application, the recognition of its «high reputation» will be noted in the trademark register. Thus, the owner of the mark will have a document proving his right to special protection. The classification can be challenged at the request of third parties with «legitimate interest» that require the Inpi an examination of the classification substandard.

«The current legislation is silent on the process of recognizing a brand as being highly reputed,» said the rapporteur of the project, former senator Flexa Ribeiro (PSDB-PA), in his opinion.

At the Commission on Science, Technology, Innovation, Communication and Information Technology (CCT), the project has been granted a mandate that the recognition of the high reputation be valid for 10 years, and that the renewal application be justify.

Source: senado.leg.br

McDonald’s Loses Flagship Trademark “Big Mac” in the European Union

By Maria Sol Porro

After years of confrontation with the small Irish supermarket chain, «Supermac», founded in 1978, the European Union Intellectual Property Office (EUIPO) has revoked the rights to use the «Big Mac» brand in the European Union, registered by the multinational-nal «McDonald’s».

The conflict began in 2015 when «Supermac» wanted to expand its 100 stores throughout the United Kingdom and other areas of the EU, trying to register the «Supermac» trademark on these sites. However, he found that although none of the products offered by the Irish was called ¨Big Mac¨, the multinational used the similarity between the two trademarks to block the expansion, preventing the registration of «Supermac» in the EU, pointing out that the similarity of both TM could confuse consumers. In this case, the EUIPO agreed with the US multinational due to the similarities between the two signs and the possible confusion alleged by McDonald’s.

Before this blockade by the multinational, the Irish fast food chain presented its claim against EUIPO in April 2017, requesting the revocation of the protection on the trademark «Big Mac», alleging that «McDonald» registers and retains different denominations to use against its future competitors.

In relation to this new requirement, the community body decided to admit the claim of «Supermac» and revoke the registration of the trademark owned by «McDonald’s» because the US company had not demonstrated a «genuine use in a significant part of the European Union» of the same during the five years prior to the filing of the aforementioned case, which was in 2017. For this reason, «Supermac» may use the denomination ¨Big Mac¨ in any product that sells at the present. However, it is important to remark that, since TM ¨Big Mac¨ is also registered at the national level, «McDonald’s» will not lose its protection in these areas.

However, the last word has not yet been said, as a spokesperson for the hamburger multinational has declared that «McDonald’s» will appeal the ruling of the EU Intellectual Property Office. In this way, the resolution will go to the resource room of the community body, in which the US company may provide new evidence, with the final decision reaching the Court of Justice of the EU, based in Luxembourg.

Source: https://elpais.com/economia/

8 Keys to Understand the New European Trademark Directive

By Maria Sol Porro

Read on to know the 8 changes on the New European Trademark Directive. If you want to register a trademark or you have a registered trademark this interests you.

Nowadays the economic markets experience constant and vertiginous changes in the way in which daily transactions are developed, both of goods and of services. Within these markets, not only material assets have a paramount value, but also the signs used to identify them and to distinguish them from the rest of the competitors, that is, the so-called intangible assets.
Therefore, it is not surprising that the European Union decides to harmonize the laws of each of its members in relation to the type of trademarks that can be requested before the European Union Intellectual Property Office (EUIPO), the requirements of the applications and also of the form of processing.

For this reason, on December 16, 2015, Directive No. 2015/2436 was issued, «on the approximation of the laws of the Member States regarding trademarks», which entered into force on January 14, 2019. In this sense, it is important to point out that since a Directive is the one that establishes these rules in trademark issues, each European country must dictate a national law to transpose the community regulations to its national scope in order to avoid any type of penalty in case of not doing it.

8 changes on the European Trademark Directive

Based on the previously mentioned, we will comment on the main changes on the European Trademark Directive, that will have greater impact on the day to day of professionals and owners of industrial property rights, both in Europe and in the rest of the world, namely:

I- Legitimization to obtain the registration of a trademark

From now on, they will be entitled to apply for and register a trademark, natural or legal persons, whether they are nationals of the European Union or of another country outside the Union. However, it is important to note that the latter, when they are legal persons, must do so with an EU agent or lawyer with the corresponding authorizations.

II – Requirement of graphic representation disappears

What until now was a fundamental requirement, will cease to be required when submitting an application to EUIPO. In other words, it will only suffice if the sign can be represented in such a way that there is sufficient clarity about the object to be protected and that it can be published in the Official Gazette. As a consequence of this change, the range of possibilities for the registration of non-traditional brands (brand of form, position, pattern, movement and holograms, among others) is broadened, which, added to technological changes, will allow adequate representation in the Official Gazette for later registration.

III- New types of brands

On one hand, the multimedia trademark is incorporated, which is a combination of image and sound that will be represented by the presentation of an audiovisual file that contains the combination of the image and the sound (EJ: video game). On the other hand, the trademark of certification or guarantee which allows to distinguish the products or services that its owner certifies with respect to the materials, the way of manufacturing the products or the rendering of the services, the quality, the precision or other characteristics, with the exception of the geographical origin, of the products and services that do not possess this certification, without the need of belonging to any group or entity.

IV- The ¨notorious trademark¨ disappears

Prior to the new directive, signs that reached a certain degree of popularity could be called «notorious» (popular brand within a specific market) or «renowned» (popular brand for the consuming public in general). With the new directive, the «notorious» brand category is absorbed into the «renamed» brand. Therefore, the old «notorious» brands must accredit their wide use and knowledge in the general public to achieve this recognition.

V- Changes in the trademark registration procedure

The main news about the registration procedure are related to the legitimacy to formulate opposition, including those of the licensees of a trademark, by imposing on the opponent the obligation to prove the use of the trademark on which it is based. the opposition and, finally, for the total renewal of the brand, as it will be enough with the payment of renewal fees to renew the trademark.

VI- Priority claim

It must be filed now with the trademark application. The priority is what allows the owner to request the trademark in any member country over a period of six months, but taking as a reference the date of application to the European office. Until now, it could be requested for three months from receipt of the priority declaration.

VII- Acquisition of distinctive character due to use

The Office will only examine the acquired distinctive character if there is a request from the applicant for the European Union trademark. As regards the application deadlines, both types of claim can be presented: together with the application; or at the latest, in response to the first objection of the examiner. It will not be possible to present claims in the appeal procedures.

VIII- Increase in anti-piracy measures

Piracy is a major problem at present for trademark holders and licensees. Therefore, even if the products (which contain identical or virtually similar brands) are not going to be marketed in the TM holder or licensee’s country within the EU, if not in another EU country, a trademark owner may prevent the transit of these products through his country. In order to do so, it is only required that the base trademark of the enforcement action is registered in the country where the product in question will be marketed (destination country).

Conculsions of the changes in the Europan Trademark Directive

To conclude, we understand that the changes introduced will lead, among other things, to the simplification, efficiency and strengthening of the trademark protection system in the EU. And, although the objective of this reform as a whole is to strengthen the European Trademark Network, it is important to bear in mind that these changes will mean a new challenge for the European administrations, having to adapt its work system to the required changes in record time.

If you need help with trademarks do not hesitate to contact us. At Moeller IP we have specialized trademarks attorney in America and Canada since 1929.

Source: https://www.fidefundacion.es/

Amendments to the Trademarks Legislation

By Mariano Tabanera

Changes in the Trademark Legistation

Read on to know some amendments in the Trademark Legislation, which although they have not yet been effective it is important to take into account.

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.

Trademark Legistation – New amendments 

1- Declaration of Use 

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 order to renew a registration the use in at least one of the protected products in that registration will have to be declared.

It is important to highlight that only the registrations granted after the effective date of these amendments will be held to the obligation of filing a Declaration of Use.

Date of first use is required in the application. Failing or neglecting to do so will be considered as a declaration of no prior use. This cannot be amended.

2- Likelihood of confusion 

Perhaps one of the most relevant amendments is the fact that Consent Letters or Co-Existence Agreements will now be binding for the Examiners in cases of likelihood of confusion, even if the resemblance between the marks is very high. Although a bold move, we have yet to see how it is enacted.

3- New relevance of «Bad Faith»

Finally, a completely new relevance has been given to the concept of “bad faith,” allowing for objections and oppositions to applications based on the bad faith of the applicant. The amendments also include a revision of the grounds for cancellation of a mark based on bad faith, when there has been a commercial relation between the parties.

Conlusion of the changes in the Trademark Legislation

These are only some of the new amendments to the trademark legislation, which is not yet effective, and a Regulation for this new Law is still pending. Therefore, how it will be enacted and applied is yet to be seen. However, it is useful to have this in sight, in order to prepare clients for the new scenario.

If you need help registering a Trademark or you have questions about it do not hesitate to contact us. 

Source: http://dof.gob.mx/

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 hold that the contested jurisdictional decision was properly reasoned and had been issued in a regular proceeding.

However, the issue took an unexpected turn when the Constitutional Court (TC) found the request for judiciary protection order filed by the Goldsun Company to be well founded. Once the judiciary protection order was admitted, the matter was reconsidered.

On one hand, the TC established that the appellant’s claim (the protection of its right to the registration of the G-Kristal trademark) had no direct constitutional basis based on the right to intellectual creation (which, protects the broad possibility of creation in literary, scientific, technological or artistic areas without obstacles, censors or restrictions on the part of the state or individuals) or on the right to the protection of intellectual creation (guarantees the existence of a regime of protection of moral and material interests that derive from the said creations). This was the reason why it rejected this end of the demand. On the other hand, the TC found that the judgment of the Supreme Court had not been duly substantiated, since it did not sufficiently explain the reasons that led to the conclusion that the decision of the INDECOPI should be revoked.

Consequently, the Constitutional Court declared that the claim was properly supported based on the violation of the right to the due justification of judicial decisions and, consequently, it nullified the decision of the Supreme Court. Finally, it provided that the Supreme Court must reiterate its’ the decision, taking into accounts the grounds contained in this judgment.

Source: http://laley.pe/not/3956/

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 the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.