ELZABURU Blog - Industrial and Intellectual Property

Author Archives: Elzaburu

Trademarks in Iraq. Re filing of main interest trademarks

As if it had ever been out of the spotlight in recent times, Iraq is once again in the international news: for the first time since the commencement of the war against ISIS, the United States has started to withdraw troops from the country.

I have paused for a moment over this piece of news, which could have gone almost unnoticed in the midst of extensive coverage of the unsettled political situation and the heavy snowfalls in Spain, to reflect on the scope and unimaginable consequences of a crisis which, on its various fronts, has lasted for decades.

I can clearly recall the impact that the news of the bombing of Iraq by the United States, towards the end of the nineties, had on me when I was practically still a girl. At that time I was not able to comprehend the reasons for what was happening or to grasp the implications. Nor, I fear, would I be able to do so now, twenty years later. I even find it hard to envisage the conditions in which our profession may be practiced in such a scenario. Conflicts affect all aspects of life and, although this may seem of little significance within the broader context, therefore extend also to intellectual property, to trademarks, to the governmental institutions and agencies which administer them, to local officers and practitioners, to right holders and interested third parties, even to communications, postal services and technology, and to physical files which may disappear or be destroyed.

I can well appreciate that in this scenario priorities may be hard to establish and it is for this reason that I am starting to see a justification for the decision, of which we have recently learned, taken by the Iraqi Trademark Office to “wipe the slate clean”. Thus, out of what I take to be a desire to make a fresh start after the disaster, the Office has implemented a new procedure for the registration of trademarks in which the order of some of the principal steps has been reversed. Now, all applications must, at the outset, successfully undergo prior examination. Only then will they be deemed to have been officially filed. Subsequently, they will be published and registered.

This, in itself, would not have been of such relevance to our profession had it not been accompanied by a further decision to suspend the prosecution of those trademark applications previously filed under the former law and practice. It appears that the owners of those applications will have no option but to re-file, while at least retaining their original priority during the registration proceeding of the new application.

It seems rather unlikely that the suspended applications will be reactivated, particularly in view of the fact that on 29 January 2018 – according to our sources – the Iraqi Trademark Office started sending out notifications to their owners inviting them to re-file and warning them that their rights could otherwise be lost.

While this news should be viewed with a certain degree of reservation, given that the information emerging is not uniform and other opinions have also been expressed, it would appear advisable in the circumstances for trademark owners to review their main interests in Iraq and, for safety’s sake, to re-file in cases where a previous application for a mark of fundamental importance may be affected by the suspension process.

Author: Cristina Arroyo

Visit our website: http://www.elzaburu.es/en

European counterfeit and piracy Watch-List

Time period commences for stakeholders to report infringing marketplaces to be included in future European Counterfeit and Piracy Watch-List

Based on a similar initiative in the US, where a list of infringing markets has been drawn up, the European Commission has just launched a consultation that it will use to draw up a list of its own, namely, the Counterfeit and Piracy Watch-List.

The creation of this Watch-List falls within the framework of the strategies and initiatives being implemented by the Commission in order to tackle the challenges that have arisen in the field of IPR protection in the EU.

In that regard, a recent study carried out by the European Union Intellectual Property Office (EUIPO) and the OECD shows that up to 5% of all annual imports into the EU are counterfeit or pirated products.

These fraudulent practices cause rightholders to suffer serious losses and pose a grave threat to investment, innovation and employment in European industry.

The European Commission has launched a new project aimed at identifying physical and, in particular, online marketplaces located outside the EU which engage in counterfeiting and piracy.

The list in question will act as a comprehensive database of the most problematic marketplaces, based on input provided by stakeholders. The Commission will thoroughly verify the information that is contributed in order to confirm that protected IPR have indeed been infringed. Contributors may remain anonymous if they so wish.

The purpose of the Watch-List will be three-fold:

  1. It will make consumers aware of the safety, health and environmental risks posed by acquiring fraudulent goods and services.
  2. The authorities and rightholders will be able to take the appropriate measures to reduce the availability of IPR infringing goods or services.
  3. The owners and operators of the marketplaces concerned will be urged to adopt business models that rely on the licensed distribution of legitimate content and products.

The European Commission has given stakeholders until 31 March 2018 to contribute to the identification of online or physical marketplaces that infringe IPR.

This presents us with a great opportunity to publicly reveal the ever increasing number of infringements that are being committed, particularly online.

Visit our website: http://www.elzaburu.es/en

The Court of Justice of the European Union backs the possibility of claiming ownership of an EU trademark on the grounds established in the Spanish Trademark Act

The judgment passed by the Court of Justice of the European Union on 23 November 2017 in case C-381/16 (ECLI:EU:C:2017:889) holds that ownership of an EU trademark registration may be claimed in the courts on the grounds provided for in Article 2.2 of the Spanish Trademark Act, provided that the proprietor is domiciled in Spain.

By this judgment, the CJEU resolves a question referred by the Spanish Supreme Court for a preliminary ruling regarding the compatibility of the aforementioned provision with Regulation no. 207/2009 on the European Union trade mark (EUTMR). In the proceedings which had given rise to that appeal, a claim to recover ownership of the “Shower Green” EU trademark registration had been filed with the EU Trademark Court in Spain. The action was based on both Article 18 of Regulation no. 207/2009, referring to action claiming ownership of a trademark registered by the proprietor’s agent or representative without consent, and Article 2.2 of the Spanish Trademark Act, which alludes to more general cases of trademarks which have been applied for in violation of third-party rights or in breach of a legal or contractual obligation.

The action had been dismissed at first instance, since the Court considered that the applicant of the trademark registration was not an agent or representative of the plaintiff, and the conditions laid down in Article 18 EUTMR had not, therefore, been fulfilled. As regards Article 2.2 of the Spanish Trademark Act, the Court considered that it was not applicable to the case, since it refers to grounds for recovery of ownership that are not provided for in the EU Regulation.

This decision was revoked on this second point by the EU Trademark Court in Alicante which, following legal doctrine that it had applied in a previous judgment, affirmed that Article 2.2 of the Spanish Trademark Act could apply in cases concerning EU trademark registrations whose proprietor is domiciled in Spain, since it falls under the scope of Article 16 of Regulation no. 207/2009 as regards reference to national laws. According to that provision, a European Union trademark as an object of property shall be dealt with as a national trademark of the country in which the proprietor has its seat or domicile or, failing that, an establishment. In the case in question, the Court considered that the EU trademark “Power Green” had been applied for in breach of the plaintiff’s rights and consequently accepted the claim of ownership based on Spanish law.

Thus, prior to ruling on the cassation appeal that had been filed against the appeal judgment, the Spanish Supreme Court referred a question to the CJEU for a preliminary ruling. The latter, in its judgment of 23 November, fully supported the stance taken by the EU Trademark Court in Alicante and confirmed its interpretation of Articles 16 and 18 of Regulation no. 207/2009.

In the CJEU’s view, action for the recovery of ownership of a European Union trademark registered in the name of an agent or representative of the trademark holder without the latter’s consent is governed exclusively by Regulation no. 207/2009. However, where different situations are concerned, the national laws of the Member State determined in accordance with the rules of Art. 16 of the Regulation shall apply.

This decision opens the door –at least in cases of trademarks whose proprietor has its seat or domicile in Spain– to the possibility of bringing claims of ownership in respect of those marks in cases that are not provided for in European legislation, which confer greater protection on persons whose trademark rights have been damaged by fraudulent third-party conduct.

Author: Carlos Morán

Visit our website: http://www.elzaburu.es/en/

Venezuela: Recommended to pay official fees for trademarks in good time before the due date

In Venezuela, as a consequence of the Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015, there has been a significant increase in theofficial fees for procedures for registered rights.

The Reform has also complicated the handling of payment of fees for registration, renewal and recordals of changes of ownership, changes of address and licences in the area of trademarks.

Experience has shown us that in Venezuela steps must be taken as far in advance of the due date as possible, given that payments of fees must be transferred to the account of the Autonomous Intellectual Property Service (SAPI) and once the transfer has been completed, the transfer receipt must be officially stamped. It is not uncommon to encounter extraordinary bureaucratic obstacles, which lead to delays.

Furthermore, the U.S. Government recently imposed economic sanctions on Venezuela, which also have an impact in the field of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring transactions made in dollars to accounts in Venezuela, which can lead to considerable delays in the completion of payments. These obstacles can have significant consequences for trademark rights. If we consider, for example, the renewal procedure, in relation to which there are no provisions under Venezuelan legislation for a grace period beyond the expiry date, the payment of the official fee (which for one trademark in a single class currently amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry date of the trademark, otherwise it will be declared abandoned.

It is therefore advisable to keep in mind that in Venezuela, with respect to those procedures requiring payment of a fee affected by Article 6 of Decree No. 1398, it is necessary to act well in advance of the deadline.

Author: Cristina Arroyo
Visit our website: http://www.elzaburu.es/en

Indonesia becomes the 100th Member of the Madrid Protocol

On 2 January 2018, the Madrid Protocol will take effect in Indonesia. Following Thailand’s accession to the Protocol some weeks ago, this is a natural and expected development.

Indonesia joins the Madrid System having submitted some of the most common declarations permitted under the Madrid Protocol. The Indonesian Trademark Office will be able to extend the time limit for refusal of the trademark to 18 months, by virtue of Article 5.2 b) of the Protocol, and will be able to charge an individual fee for applications, subsequent designations and renewals affecting Indonesia, pursuant to the provisions of Article 8.7. The Indonesian government has also made the declaration provided for under Rule 20bis(6) of the Common Regulations, indicating that recordals of licenses on the International Register shall have no effect in Indonesia. For recordals of licenses to have effect, it will be necessary to file the appropriate recordal application with the Indonesian Office.

There are certain particularities in legal and administrative practice in Indonesia regarding the prosecution of trademarks. For example, national applications must be accompanied by a Bona Fide Statement. For the time being, the Madrid System does not appear to have developed any formula for adapting this requirement laid down at national level to the international level. Other member countries of the Madrid System have addressed this requirement by formulating an ad hoc document or including an express declaration on the international application form. It remains to be seen how the Indonesian authorities will adapt those specifications of goods/services that have been deemed acceptable by the home office or WIPO to the sui generis practice in Indonesia. Such issues will arise in day-to-day practice and it will be necessary to work closely with our network of local agents to adapt to the new situation and guarantee the best possible strategy for trademark owners with interests in Indonesia.

Author: Cristina Arroyo   Visit our website: http://www.elzaburu.es/en

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