ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

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

Criminal conviction for storage for commercial purposes of goods infringing copyright, even in storage facilities separate from the place of sale

Source: Pixabay

The judgment of the CJUE (Case C-572/17) of 19 December was issued within the context of a request for a preliminary ruling from the Swedish Supreme Court in criminal proceedings brought by the Public Prosecutor’s Office of this Court against Mr. Imran Syed concerning the infringement of trade marks and infringements of copyright in literary and artistic works. 

Mr Syed ran a retail shop in Stockholm (Sweden) in which he sold clothes and accessories with rock music motifs. In addition to offering the items for sale in that shop, Mr Syed stored such goods in a storage facility adjacent to the shop and in another storage facility located in Bandhagen, a suburb of Stockholm. It is established that Mr Syed’s shop was regularly restocked with merchandise from those storage facilities.

The issue arising was whether goods stored by someone in a warehouse and bearing a protected motif could be considered as being on sale whenever there are identical goods on sale in a retail establishment run by such person.

In this judgment the CJUE recalls that such an act can constitute an infringement of the exclusive distribution right (Article 4(1) of Directive 2001/29) even if that act is not followed by the transfer of ownership to a purchaser of the protected work or a copy thereof (expressly citing its judgment of 13 May 2015, Dimensione Direct Sales and Labianca, C‑516/13). Therefore, an act prior to the actual sale of a work or a copy thereof protected by copyright, which takes place without the rightholder’s consent and with the objective of making such a sale, may infringe the distribution right. Although carrying out the sale is not a necessary element for the purpose of establishing an infringement of the right of distribution, it must nonetheless be proven that the goods concerned are actually intended to be distributed to the public without the rightholder’s consent, inter alia by their being offered for sale in a Member State where the work at issue is protected.

The fact that a person, selling goods bearing copyrighted motifs in a shop without the rightholder’s authorisation, stores identical goods, may be an indication that the stored goods are also intended to be sold in that shop and that, accordingly, that storage may constitute an act prior to a sale being made, which is liable to infringe that rightholder’s distribution right.

Although the distance between the storage facility and the place of sale may constitute evidence that can be used in seeking to establish that the goods concerned are intended to be sold in that place of sale, that evidence cannot, on its own, be decisive. It may, on the other hand, be taken into account in a concrete analysis of all the factors likely to be relevant, such as, for example, the regular restocking of the shop with goods from the storage facilities at issue, accounting elements, the volume of sales and orders as compared with the volume of stored goods, or current contracts of sale.

The judgment finally rules that the storage by a retailer of goods bearing a motif protected by copyright on the territory of the Member State where the goods are stored may constitute an infringement of the exclusive distribution right when that retailer offers for sale, in a shop without the authorisation of the copyright holder, goods identical to those which he is storing, provided that the stored goods are actually intended for sale on the territory of the Member State in which that motif is protected. The distance between the place of storage and the place of sale cannot, on its own, be a decisive element in determining whether the stored goods are intended for sale in the territory of that Member State.

Once more, with this judgment the CJUE imposes order regarding the problem of copyright-infringing acts or means, prior to the sale of goods, that regrettably and painfully affect creators far too frequently.

  Author: Juan José Caselles

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

Somalia. How to protect your trademarks in Africa’s most failed state

In recent years, some clients have expressed an interest in registering their trademarks in Somalia. The unrest and extreme difficulties in this country in the Horn of Africa, and the permanent closure of its Trademark Office almost three decades ago, have made this impossible.

However, although there is no law governing trademarks, trademark owners can adopt precautionary measures against unauthorized use of their trademarks by third parties, by publishing Cautionary Notices in one of the country’s major newspapers. Trademark owners are thus able to notify and warn third parties of their ownership of the marks and establish some evidence of their rights.

While not many companies or clients are interested in seeking protection in Somalia, some companies have begun making preparations by publishing Cautionary Notices.

 

Author: Cristina Arroyo 

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

Rwanda: New deadline date for renewal of trademarks filed before the entry into force of the Law of 26 October 2009

The Rwandan Trademark Law of 26 October 2009 entered into force some time ago, in December of that same year.

However, the Trademark Office has now finally clarified the date by which trademarks filed before the entry into force of the Law must be renewed, in line with new legal provisions.

There has been some confusion concerning that date, given that in principle, the Trademark Office set 26 October 2019 as the deadline for renewal of these trademarks that were pending registration when the new Law entered into force. Rwanda’s Trademark Office has now confirmed that the date by which all of the affected trademarks must be renewed is 14 December 2019.

While Rwanda is not a country that is often included in the internationalization projects of Spanish companies and trademark owners, we are working together with our local associates in order to ensure that all affected cases are resolved by the date set by the Trademark Office.

Author: Cristina Arroyo 

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

 

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