ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

“Good morning, Myanmar”

Myanmar "Soft Opening Period"

After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Myanmar "Soft Opening Period"  

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

  • Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
  • Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.

 

Author: Cristina Arroyo

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Is it possible to register the trademark COVID-19?

¿Se puede registrar la marca COVID-19?

These times during the lockdown have certainly given us the opportunity to ponder over matters that perhaps might not have occurred to us under normal circumstances.

For an IP professional such as myself, one such curiosity has undoubtedly been the number of people who have had the idea to try to take advantage of the “brand of the moment”: COVID-19.

Is it possible to register the trademark COVID-19?  

If we check on the numbers by consulting the Spanish Patent and Trademark Office’s database, we may see that between 12 March and 5 May, there were no fewer than 16 applications for trademarks or tradenames consisting of or containing the term COVID-19 (all filed, incidentally, in the name of natural or legal persons domiciled in Spain).

Contrary to some reports published in the media, it should be pointed out that none of these applications have yet been granted.

This means that as things currently stand, not a single person in this country can claim to have secured registered rights in the term COVID-19 or any other expression containing that term for which they have sought official protection.

Of these applications, nine have not yet undergone initial examination by the Office, while the prosecution of the rest of the applications has been suspended by the Office’s examiners based on the bar to registration laid down in Article 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), which prohibits the registration as trademarks of signs which “are contrary to law, public policy, or accepted principles of morality”.

In this regard, it is worth mentioning that in each case, the official actions suspending the prosecution of these seven applications contain, in relation to the application of the aforementioned provision, the following observation: “It is held that the sign applied for comes under the bar to registration laid down in Art. 5.1 f) of the Trademark Act (Act No. 17/2001 of 7 December 2001), given that the sign applied for is in breach of accepted principles of morality, since it could be offensive for a broad section of society insofar as it attempts to make commercial gain, by including in the sign the identifying part of the name of a virus which is causing great suffering in our country and across the world”.

We will have to wait to see what stance the Spanish trademark authority adopts in relation to the registrability of the term COVID-19, although in those cases where the applicants specify that the purpose of their application is the preservation of public health, the possibility that they may obtain a favourable decision cannot be ruled out.

In any case, there are other side issues which may be of more interest to the average citizen than to legal professionals, such as: Is “COVID-19” really a sign that can be commercially exploited with reasonable expectations with regard to profitability? How can goods and services be marketed in such a way that “COVID-19” becomes an attractive sign that moves the public to consume those goods or acquire those services? Furthermore, if any of those applicants were to secure registration, to what extent could they prevent third parties from using the term COVID-19 for commercial purposes in relation to goods or services identical or similar to those for which the registration was obtained?

Only time will tell when it comes to gaining answers to these questions, but it is certainly curious that a term with such horrible connotations has already been the subject of applications for registration in relation to goods such as jewellery, toys or footwear, or legal services, to cite just a few examples.

What is beyond doubt is that, even in such difficult times as those experienced during a terrible pandemic, it is clear to people in Spain that the main instrument for guaranteeing and protecting the viability of a commercial project, whatever the nature of that project may be, is to obtain a trademark registration.

 

Author: Luis Beneyto

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CJEU ruling: Is it possible to seek compensation for damages in respect of infringement of a trademark that has never been used?

licor st germain

On 26 March, prior to the changes made to its operational arrangements due to the COVID-19 crisis, the Court of Justice of the European Union issued an interesting judgment (in case C-622/18) with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.

The judgment was in response to a request for a preliminary ruling made by the French Court of Cassation in relation to an action for infringement of the French trademark SAINT GERMAIN covering alcoholic beverages, brought by the owner of the mark against companies that were producing and distributing a liqueur under the name “St-Germain”. In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.

 

licor st germain

 

Under French law, the effects of the declaration of revocation are regulated in the following terms: “the rights of a trademark proprietor who, without proper reason, has not made genuine use of those rights in respect of the goods and services referred to in the registration during an uninterrupted period of five years, shall be revoked. Revocation shall take effect on the date of expiry of the five-year period laid down in the first paragraph of this article. It shall have absolute effect”.

The question therefore arises as to whether the owner of a trademark who has never used it and whose rights in the same have been revoked on expiry of the legally established five-year period, may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for damage sustained as a result of the use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In its ruling, the CJEU points out that the Harmonisation Directive states that the Member States should remain free to determine the effects of revocation. Consequently, a national law which establishes the dies a quo from the date of expiry of the five-year period without use, is not contrary to EU law. If this is the case, there is nothing to prevent the filing of an action for infringement of trademark rights with the corresponding claim for damages, if permitted under national legislation. However, one significant detail should be noted in this regard.

With regard to the award of damages, the Court points out that Directive 2004/48 stipulates that the compensation must be “appropriate to the actual prejudice suffered by [the proprietor of the trademark] as a result of the infringement”. Although the fact that a trademark has not been used does not, in itself, preclude compensation for acts constituting trademark infringement, it remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the damage sustained by the owner and, therefore, the amount of damages that the owner may claim.

As for the consequences of this judgment in Spain, it should be noted that the effects of the revocation of trademarks are regulated as follows under Article 60 of the Spanish Trademark Act: “A registered trademark shall be deemed not to have had, as from the date of the application for revocation or the counterclaim, the effects specified in this Act, to the extent that the owner’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be set in the decision on the application or claim for revocation at the request of one of the parties”. This provision of Spanish law essentially reproduces the provisions of Article 62 of Regulation (EU) 2017/1001, and therefore the situation for European Union trademarks is the same.

Therefore, if requested by the party seeking revocation, in Spain it is also possible for the declaration of revocation to be made effective retroactively from the date of expiry of the five-year period of non-use of the mark. Nevertheless, the owner of the mark could claim compensation for damage sustained if the infringement of his or her trademark occurred in a period not covered by the effects of the revocation. However, it remains to be seen what amount of compensation will be determined by the Spanish courts in such cases.

 

Author: Carlos Morán

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Myanmar: Upcoming opening, in January 2020, of a “Soft Opening” period for owners of trademarks recorded at the Office of Registration of Deeds

After almost a year of work and preparations to define the scope and the implementation of the new Law, contrary to expectations, the Myanmar authorities have decided to open a prior transitional period in which those parties that have recorded a Declaration of Ownership (DTO) at the Office of Registration of Deeds (ORD) may file their trademark within a preferential term of 6 months prior to the official opening of the Trademark Register. This term has been designated a “Soft Opening period and its purpose is to enable holders of recorded DTOs to try to obtain a certain degree of priority.

While there is no official opening date for the “Soft Opening” period and many issues remain with regard to this procedure (for example, the amounts of the official fees are not yet known and it is not known whether powers of attorney must be legalized up to the Consul), it is expected to open in January 2020. Assuming that this date is met and there are no delays, those trademark owners who are entitled to and wish to take advantage of the “Soft Opening” period, will have until July 2020 to file their trademarks, while the Register will officially open for any interested parties in July. Any holders of recorded DTOs who have not taken advantage of the “Soft Opening” period will lose this preferential option and will have to file for registration to obtain their trademark rights once the Register has officially opened in the second half of the year.

In light of the above, there are three possible scenarios:

  1. Trademark owners with recorded DTOs. These owners are entitled to file their trademarks in the Register during the “Soft Opening” period, upon payment of a fee and compliance with all the formal requirements to attest to their ownership.
  1. Trademark owners who do not hold a recorded DTO. They could, up to the end of December 2019, try to record a DTO before the “Soft Opening” period opens, with a view to subsequently filing the mark within that preferential period. To that end, it is necessary to pay an official fee and satisfy all the formal requirements.
  1. Those interested parties who, from the opening of the Myanmar Trademark Register in the second half of 2020, wish to file an ex novo trademark application without any prior preferential right, under the provisions of the new Law.

In light of the above, and bearing in mind the short period of time remaining before the opening of the “Soft Opening” period and that it may be necessary to have powers of attorney legalized up to the Consul, it would be advisable for those trademark owners with interests in Myanmar to seek urgent advice to evaluate the steps to be taken in each situation.

In case it may be of interest to you, we are attaching a link to earlier information on the new Law in Myanmar: “Myanmar: first to file trademark system

Author:  Cristina Arroyo and Juan Miguel Sáinz de Marles

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

United Arab Emirates reduces its official fees in relation to IP rights

Great news for holders of trademark rights and IP professionals interested in the United Arab Emirates. 

The high costs of this jurisdiction, one of the world’s most complex economies and also one of the countries in the Arabian peninsula offering most opportunities for foreign investment, have often proven to be an obstacle to the internationalization of trademarks and a decisive factor in decision-making with regard to the management and maintenance of trademark portfolios.

The Middle East has for some time been one of the most expensive regions in the world for protection of IP rights.

The GCC (Gulf Cooperation Council, made up of the United Arab Emirates, Saudi Arabia, Bahrain, Kuwait, Oman and Qatar) has worked hard to integrate, unify and standardize areas of the economy, finance, trade and customs, the laws of its members, among other aspects, and all of these efforts have also had an impact in the field of trademarks. One of the major milestones in the field of IP, not only in the GCC countries but in the Middle East and the territories of the region, was the issuance of the GCC Implementing Regulations. In this context of forging closer links between these countries, in the past few years we have seen reductions in tariffs and bureaucracy in neighbouring countries such as Bahrain, Oman and Kuwait which have facilitated and simplified the procedures for registering trademarks.

While not all of the fees relating to trademarks have been reduced in the United Arab Emirates (for example, the cost of preparing documentation and attending to formal requirements remains very high), the fees for registration and renewal have been reduced, which will facilitate matters with regard to portfolio management and decision-making.

Authors: Cristina ArroyoJuan M. Sáinz de Marles
Visit our website: http://www.elzaburu.es/

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