Tag Archives: Trademarks

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/

Brazil set to become the next country in the Americas to join the Madrid System

Brazil’s accession to the Madrid System for the international registration of trademarks will take effect on 2 October 2019.

With Brazil, the countries in the Americas that form part of the Madrid System will now number 6. Cuba, Colombia, Mexico and the USA are all members, with Canada joining them on 17 June 2019 following its accession to the Protocol. There are also some jurisdictions in the Caribbean that have been members for years, such as Antigua and Barbuda and the Netherlands Antilles (Curaçao, Sint Maarten and the BES Islands, made up of Bonaire, Sint Eustatius and Saba).

With the accession of Brazil, which will become the 121st member of the Madrid System, trademark owners will have the opportunity to opt for an alternative course of protection at WIPO, by means of a single multiclass application, payment of a single fee, the flexibility to seek protection in further countries in the future, and a single procedure for renewal in the designated countries of protection, among other advantages offered by the international trademark system.

It is to be assumed that the official language of the INPI will be Portuguese and, therefore, the language factor will be an issue to consider when defining strategy. While the INPI has worked hard over the years to speed up procedures, there can be no doubt that one of the biggest challenges faced by the Brazilian government is complying with the time limits established by the Madrid System, such as, for example, the time limit for carrying out the examination of the application and the time limits for opposition proceedings.

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

New amendment to Regulation implementing the Trademark Act fires starting pistol for proof of use in Spain

Courtesy of Mohamed Hassan at Pixabay

The amended Regulation implementing  the Spanish Trademark Act (Act No. 17/2001) has been published has been published the 30th April and enters into force the 1st May 2019.

With the approval of this amendment, the starting pistol has been fired for applicants of trademarks, in the context of opposition proceedings, to be able to require the opponent to furnish proof of use of the registrations on which the opposition is based, provided that the registrations are subject to the use requirement. Thus, if the opponent fails to furnish proof of use of the mark invoked as the basis for opposition or show that there are proper reasons for non-use, the opposition will be dismissed with respect to that mark.

This is an important change to the Spanish trademark system, arising from the transposition of Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks.

However, pursuant to the First Transitional Provision, this amendment will not affect trademark and tradename proceedings commenced before this amendment to the Regulation comes into force. Only applications filed as of 1 May will be subject to the new system of proof of use in opposition proceedings.

As already anticipated, the entry into force of the new system for administrative invalidity and revocation proceedings has been postponed until 14 January 2023.

Author: Luis Baz
Visit our website: http://www.elzaburu.es/en

Canada – How to simplify your trademark system to improve efficiency

Since 2015 the Canadian government has been preparing for its accession to the Madrid System for the international registration of trademarks and has, to this end, adopted decisions and developed internal legal mechanisms to adapt to international trademark system standards. It has signed up to three core international treaties in the area of trademarks: the Protocol relating to the Madrid Agreement concerning the International Registration of Trademarks, the Singapore Treaty on the Law of Trademarks and the Nice Agreement concerning the International Classification of Goods and Services.

On this premise, the Canadians have passed a new national trademark law, which is set to come into force on 17 June 2019.

The new law introduces important changes, which will undoubtedly simplify the procedures for trademark protection considerably in what until now has been a highly complex jurisdiction and which will, to some extent, move away from the common law systems and towards a more European legal framework.

The most significant change is the elimination of the requirements concerning use or intent to use in trademark applications, and the derogation of the requirement to submit a declaration of use to secure the registration of a trademark. Thus, in June of this year, Canada will move over to a first to file trademark system and abandon its traditional common law first to use” system.

Below are some of the key features that will form part of trademark practice in Canada from 17 June 2019:

  • The international trademark registration system will be an option for the internationalisation of trademark rights.
  • Trademark applications filed from 17 June will not have to invoke any filing basis that would give rise to dependency and they will be registered without the need to declare use beforehand.
  • However, it will be mandatory to specify goods and services in accordance with the Nice Classification, which will increase the costs of protection, due to the implementation of a class system.
  • The duration of trademarks is significantly reduced, since the current duration of 15 years will change to 10 years, in line with most trademark legislation and the Madrid Protocol.
  • From the entry into force of the new law, there will be two important consequences for the next renewal of a trademark: its duration will be 10 years and its list of goods and services will have to be brought into line with the Nice Classification.
  • While the declaration of use will no longer be a sine qua nonrequirement for the registration of a trademark, it will be possible to request proof of use when enforcing and defending rights, for example, in the course of cancellation or opposition proceedings.

It appears that Canadian lawmakers have opted for a very practical transition during the change, seemingly wishing to avoid an awkward coexistence of two systems (the old system and the new system) and the difficulties involved in the administration of transitional periods.

Moreover, Canada joins the group of 120 member countries of the Madrid System for the international registration of trademarks. A nice number for a long-awaited accession that will make the internationalisation of trademark rights easier for Canadians and, hopefully, also provide an incentive to explore our European markets.

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

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