ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

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

Myanmar: first to file trademark system

Source: Wikipedia

On 31 January 2019, the new Trademark Law was enacted in the Republic of the Union of Myanmar (hereinafter, “Myanmar”). The framework of the new Law is based on a first-to-file system for registration of trademarks and, therefore, the first to secure registration will be the first to obtain trademark rights in the country.

Myanmar has not had a specific trademark law until now. Instead, trademark owners could take precautionary measures to protect themselves against potential infringement and for purposes of evidence of rights. The measures generally consisted of recording a Declaration of Ownership (DTO) in an official register, which was followed by the publication of a Cautionary Notice in a local newspaper. It was recommended to adopt precautionary measures approximately every 3 years.

The new Law has not yet entered into force and further steps are pending on a legislative, organizational, administrative and structural level, including the establishment of the Intellectual Property Office. Therefore, it is not yet possible to file trademark applications and it is not clear how long it will be until the Office is operational. No official fees have been set nor is it known if the registration system will multiclass or a one class system. There are still important issues to be clarified.

Nevertheless, in view of this new opportunity provided by the new Law, trademark owners with interests in Myanmar ought to begin reviewing their portfolios and taking the appropriate strategic decisions with regard to the protection of their marks, with a view to trying to obtain a filing date as soon as the Intellectual Property Office is up and running.

It is important to keep in mind that according to our sources, it is highly likely that there will be NO Sunrise Period and that previous recordals of DTOs will not be taken into account. Consequently, trademark owners who have previously adopted precautionary measures and have DTOs on record, will not be able to benefit from the earlier protection obtained, and in order to protect their marks, they will have to file new trademark applications at the Myanmar IPO under the new Law.

As for trademark owners who have never obtained protection for their marks in Myanmar and now wish to do so, they should begin taking the pertinent decisions and making enquiries regarding the necessary preparations.

It is very important to bear in mind that Myanmar does not have any consular representation in Spain and that documents such as, for example, powers of attorney and authorizations required for steps to be taken at the new Intellectual Property Office, will have to be authenticated by the consular representation of Myanmar in another country, which may entail considerable delays. As far as Spain is concerned, the nearest Myanmar consular representation is in Paris, France.

In case it may be of interest to you, we are attaching a link to information: “Myanmar: Upcoming opening, in January 2020, of a “Soft Opening” period for owners of trademarks recorded at the Office of Registration of Deeds”.

Author: Cristina Arroyo

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

Search

Archivo

Formulario de suscripcion

Sí, soy humano*

Se ha enviado un mensaje de confirmación; por favor, haga clic en el enlace de confirmación para verificar su suscripción.
Este email ya está en uso
Debes escribir un email válido
Debes cliquear el captcha
El captcha no es correcto