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SPRING/SUMMER 2005
New Trademark Act Adopted in Morocco
Effective December 18, 2004, a new Industrial Property Act has been adopted in Morocco. Under the new law, trademark protection has been extended substantially.
One registration in Morocco will now provide protection in both the Tangier zone as well as the Casablanca zone. Trademarks which were registered or applied for prior to December 18, 2004, in either the Casablanca zone or Tangier zone, will automatically be extended to the both zones. In addition, trademarks are now valid for ten years from the date of filing, rather than for 20-year terms. Registrations may be further renewed for additional terms of ten years. There is also a provision which permits the belated filing of a renewal application within a six-month grace period. Additionally, the following changes should be noted:
♦ Service marks and collective marks are registrable.
♦ Stronger civil and criminal sanctions are imposed for counterfeiting and unfair competition.
♦ Cancellation will result from the non-use of a registered mark for five consecutive years.
♦ It is now possible to have customs authorities seize counterfeit products.
The new law brings the Morocco trademark regulations into compliance with TRIPS requirements. Please contact us if you would like further information on the new act or the revised official fees.
New Official Fees for Trademark Services in Vietnam
As a result of new trademark fees implemented by the Registry in Vietnam, foreign applicants now pay the same official fees as local applicants. As converted to United States Dollars, some of the new fees are as follows:
♦Trademark Application: US$10 (for up to 6 goods or services)
♦Publication of Application: US$7
♦Trademark Registration Fee: US$20
♦Renewal: US$35
♦Recordal of Assignment: US$27
♦Recordal of Change of Name/Address: US$20
The new fee schedule is with effect from December 30, 2004.
Registration of .IN Domain Name Extensions Now Permitted
As of January 1, 2005, it is now possible to obtain top-level domain name extension registrations for India. While trademark owners were given the opportunity to register their .IN domain names during the sunrise period from January 1, 2005, to January 21, 2005, the general public is now welcome to apply for registration .IN domain names.
Bahrain and Yemen Adopt 8th Edition of Nice Classification
Yemen’s Ministry of Industry and Trade has adopted the 8th Edition of the Nice Classification as of January 16, 2005. As such, registrations in Yemen will now be granted in accordance with the 8th Edition’s classifications for services in International Classes 43, 44 and 45.
In Bahrain, the 8th Edition of the Nice Classification was adopted on December 25, 2004; however, the implementation of the new trademark act is not expected until later in 2005. In addition to adopting the 8th Edition of Nice, the new trademark act includes the following amended regulations:
♦ Renewal applications can no longer be filed prior to the start of the last year of the registration term.
♦ Counterstatements to oppositions and responses to rejections of applications by the Registry must be filed within one month from the date of notification of the opposition or rejection. It is possible to obtain an extension of time for up to sixty days upon the filing of an application.
If you are interested in information on registering your trademarks in Yemen or Bahrain, please contact us.
Official Fees in the United States Reduced
In an effort to encourage electronic trademark filings, the United States Patent and Trademark Office has now reduced the official fee to US$325 for trademark applications filed electronically. The new fee reflects a discount of US$10 from the previous fee of US$335. However, for applications filed on paper, the Trademark Office has increased the fee to US$375. Fees for other procedures remain the same.
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SPRING/SUMMER 2004
Local Trademark Protection Now Available in St. Vincent & The Grenadines
On May 18, 2004, the Commerce and Intellectual Property Office of St. Vincent & the Grenadines enacted the new Trade Marks Act, No. 46 of 2003, as well as the new Trade Marks Regulations, S.R.O. No. 13 of 2004. The new legislation repeals and replaces the previous Registration of United Kingdom Trade Marks, Act, Cap 113. The most significant consequence of the new legislation is that local trademark protection is now available to any party, irrespective of nationality. Additionally, the following changes should be noted:
♦ The new Act repeals the Merchandise Marks Act, Cap 106, replacing those outdated penal provisions with more comprehensive and far-reaching provisions for the enforcement of trademark rights.
♦ Applications for registration will now undergo both formality examination to ensure compliance with requirements as to form (as under the previous system) and substantive examination to ensure that marks conform to certain statutory criteria for the grant of protection.
♦ The Registry will no longer rely on United Kingdom certification of trademark particulars.
♦ Goods and services will be classified according to the Nice classification system (8th ed). Applications for service classes are permissible.
♦ Applications will now be published in an official gazette for opposition purposes.
♦ A new Authorisation of Agent form is required and the official fees for all filings have been revised.
Please contact us if you would like further information on the new act or the revised official fees.
Registrations for .ht Now Available
Domain name owners seeking to expand into the Haitian market can now register under the country code .ht. On May 17, 2004, domain names under the country code .ht became available for registration on a first come, first serve basis.
For trademark owners concerned with protecting their Haitian trademark registrations, cancellation of an infringing domain name registration may be possible upon submitting proof that the trademark at issue is protected by a valid registration in Haiti.
Libya Cancels All Trademark Registrations
In a decision made by the Libyan Minister of Commerce on July 7, 2003, all trademark applications and registrations filed between the years of 1981 and 2002, have been officially cancelled. Consequently, all owners of these invalidated registrations must now file new applications at the Registry in order to maintain protection of their trademarks in Libya.
China Implements New Customs Regulations
To the delight of those doing business in China, there have been several amendments to the Customs Protection of Intellectual Property Rights of the P.R. China. As of March 1, 2004, intellectual property (IP) rights owners are now better armed in their battle to fight against unlawful infringers. The new regulations, pertaining to trademarks, patents and copyrights, provide the following greater protections:
♦ The term of recordal of IP rights with the Customs Office has been extended from 7 years to 10 years. This term can be renewed within 6 months before the expiration of the original term.
♦ IP rights owners now have 30 business days to record any changes to those rights.
♦ The complainant is now required to pay a bond only up to the value of the suspected infringing goods. Under the old, onerous regulation, complainants had to pay a bond equal to the value of the suspected infringing goods. The new bond requirement alleviates the burden of having to pay substantial bonds in order to invoke the Customs Office’s jurisdiction over the alleged case of infringement.
♦ Upon seizure of the suspected infringing goods by the Customs Office, complainants may now file applications for preliminary injunctions and/or property preservation orders with the relevant People’s Courts before filing civil proceedings against suspected infringers. Further, under the new regulations, the Customs Office will now assist in the execution of any preliminary injunctions and property preservation orders issued by the People’s Courts. IP rights owners can now pursue civil remedies against infringers while customs seizure proceedings are in progress.
♦ Methods of disposal of the infringing goods have been amended. The Customs Office may either transfer the infringing goods to charitable organizations, sell the infringing goods to the complainant, or sell the infringing goods by way of auction.
IP rights owners are strongly advised to record their rights registered in China with the General Administration of Customs in Beijing to ensure that authorities can swiftly seize infringing goods exported from or imported to various ports throughout China. If you are interested in information on registering your trademarks, patents or copyrights with Customs or with the Intellectual Property Office in China, please contact us.
Service Marks Now Registrable in Pakistan
The Trade Marks Registry of Pakistan, in an effort to comply with TRIPs obligations, has implemented the new Trade Mark Ordinance 2001. As such, effective April 12, 2004, service mark applications and priority claims are now permissible in Pakistan.
New Directive on the Use of IP Symbols in the Philippines
As of February 1, 2004, owners of intellectual property rights in the Philippines must be careful to properly give notice of their rights. Office Order No. 02 requires that registrants give notice of their registered marks by placing one of the following next to the mark: the words “Registered Mark”, the ® symbol or the words “Reg. IPOPHIL”.
With regards to patents, registrants must display either on the patented product, the container, the packaging or the advertising material, the words “Philippine Patent”, or “Reg. IPOPHIL” and the patent number. Any reference to “Philippine Patent Office” should no longer be made as that office has been replaced by the “IPO.”
Failure to provide proper notice of the registration will result in the registrant having to prove the infringer had knowledge of the registration in order to recover damages.
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FALL/WINTER 2003
New Trademark Act: INDIA
On September 15, 2003, the new Trademark Act of 1999 in India came into effect. The new Act dramatically changes trademark protection and is a welcome change for those doing business in India. The most significant points of the Act are as follows:
♦Service Marks are now registerable (up to International Class 42).
♦Multi-class applications are permissible.
♦The period of registration has been increased from 7 to 10 years.
♦Colors and shapes are now registerable.
♦The Appellate Board will now hear appeals from the Registrar’s decisions; previously appeals were heard by the High Court.
♦Well-Known marks are now recognized.
♦Increased fines for counterfeiting and trademark infringement.
In addition, the Registry has significantly increased official fees for all trademark filings. If you would like our revised fee schedule for India, please contact us.
New Trademark Act: MAURITIUS
A new trademark law was enacted in Mauritius on January 6, 2003. Points of interest in the act are as follows:
♦An applicant may, at any time before registration, withdraw an application upon payment of a fee.
♦Rights of well-known marks are recognized.
♦Trademarks and service marks are registerable.
♦The term of registration is ten years from the filing date of the application, and can be renewed for additional ten-year periods.
♦Third parties can file cancellation actions on the ground that, up to one month prior to filing the cancellation action, the mark had not been used after registration for a continuous period of not less than three years.
♦All assignments and licenses must be recorded in order to have effect.
♦Instances of infringement are punishable by penalty fees and imprisonment.
Expansion of the European Union: CTM
As of May 1, 2004, ten new countries will be entered as Member States of the European Union. Upon their entry, protection granted by the Community Trademark Registrations will extend to these countries as well. The new countries are Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, the Slovak Republic and Slovenia. Bulgaria and Romania are set to join the European Union in 2007.
Fees Increase in January: CANADA
As of January 1, 2004, the Canadian Intellectual Property Office will significantly increase official fees for patents, trademarks and industrial designs. In Canadian dollars, the official fees for trademark services have increased as follows:
Application (Initial Filing): $300
Application (Registration): $200
Renewal: $350
Opposition: $750
Changes to Trademark Ordinance: ISRAEL
Amendments have been made to Israel’s Trademark Ordinance to bring it in line with the Madrid Protocol as Israel is about to become a party to the Protocol. Provisions of interest include:
♦For all trademarks registered as of August 6, 2003, the term of registration has been increased from 7 years to 10 years from the filing date of the application.
♦There is an automatic grace period of six months past the expiration date of a registration, during which renewal may be made with payment of penalty fees.
♦Applicants may be granted an additional six-month grace period after the expiration of the automatic grace period to effect renewal, at the discretion of the Registry.
Implementation of the Madrid Protocol: UNITED STATES
As of November 2, 2003, the United States implemented the Madrid Protocol, enabling U.S. applicants to obtain trademark protection in almost 60 other countries around the world. While the Protocol offers an economical alternative to filing national applications in each individual country, there are other advantages and disadvantages to the system that applicants should consider.
Advantages:
♦Filing a single application in the home country with the ability to simply designate additional foreign jurisdictions.
♦Financial savings associated with the filing of a single international application as opposed to individual national applications.
♦Simplified renewal procedures for the home registration and all extension registrations through a single filing with the World Intellectual Property Organization (WIPO).
♦Universal recordal of assignments, name changes and address changes with a single filing at WIPO.
Disadvantages:
♦Restrictions to a base application must be made in corresponding extension applications. This rule can have many effects on an international application. For instance, the U.S. requires very specific identifications of goods and services, unlike many other countries, which accept very broad identifications. This could result in foreign extensions providing less protection than what could be obtained through separate national applications.
♦If the home country application is rejected, cancelled or successfully opposed within five years of the filing date, all of the extension filings fail as well. While these extensions can be transformed into separate national applications within a certain time frame, this will result in additional costs to the applicant.
♦International Registrations cannot be owned or transferred to business entities that do not have a real and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol.
If you would like further information as to whether the Madrid Protocol is right for you, please contact us.
“.hk” Domain Name Registrations Accepted in January: HONG KONG
Previously limited to only certain types of applicants, such as registered Hong Kong businesses, non-profit organizations, and government entities, the Hong Kong Internet Registration Corp., Ltd. will soon accept applications for domain registrations in the “.hk” country-code top level domain.
There will be a sunrise period to allow existing “.hk” owners to register before the system opens to all applicants. With certain exceptions, the registration process will be simplified, as proof of the applicant’s business will no longer be required.
Please contact us if you are interested in registering a “.hk” domain name.
New Trademark Law: TAIWAN
The Taiwan Intellectual Property Office will put into effect a revised Trademark Law on November 28, 2003. In addition to increased official fees, the revised Act includes the following points:
♦Simplified procedures for filing a new trademark application. An Affidavit of Use and Certificate of Incorporation are no longer required. Under the revised Act, applicants are only required to submit a simply signed Power of Attorney, five prints of the mark and priority documents if priority is claimed.
♦Substantive examination of renewal applications will no longer be conducted and the original registration certificate does not need to be submitted.
♦Multi-Class applications are available.
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NEWSFLASH - SUMMER 2003
Official Fees in Belize Increase
Recently, the Belize Trademark Office increased its official fees for filing and maintaining trademarks. The new official fees are as follows:
Filing Fee: $212.50
Additional Classes: $100.00
Renewal Fee: $162.50
Additional Classes: $37.50
Search: $10.00
Name / Address Change: $87.50
Assignments: $87.50
State Trademark Registrations: Hawaii
Effective July 1, 2003, Hawaii will adapt its state trademark law to mirror the federal trademark law. One of the most significant changes will be the requirement to classify trademarks in one of 45 classes. The trademark office will also take a stronger approach to scrutinizing confusingly similar marks and improving monitoring and enforcement of infringing marks.
Domain Name Registrations in Dominica
The country of Dominica will soon offer local domain name registrations under the country code .dm. If you are interested in registering your domain name in Dominica, please contact Global Trademarks, Inc. and we will notify you when Dominica domain name registrations become available.
Japan Renewals – Reclassification
A Japanese trademark registered under the old domestic class is subject to reclassification under the international system when the mark becomes due for renewal. If a reclassification request is not filed at renewal, the mark will expire after the renewal period ends. Japanese trademark law allows for a 5 or 10 year renewal period.
New Application Procedure in Vietnam
For the first time in Vietnam, trademarks will be published for opposition. The trademark publication will occur approximately two to three months after the mark is registered. Although this change in the application procedure has been approved, it has not yet been implemented. Global Trademarks, Inc. will announce this change when it takes effect.
Direct Filings
Global Trademarks, Inc. now offers direct trademark services in Australia, Singapore, Brunei, Kiribati, Solomon Islands and the USA. Global Trademarks, Inc. also offers superior trademark services through a highly qualified network of associates in over 150 countries around the world. For questions on how you can save time and money by consolidating your foreign trademark portfolio with a single firm, please contact Global Trademarks, Inc.
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SPRING 2003
New Trademark Law: HONG KONG
Hong Kong has made several major changes to their trademark law, which came into effect on April 4, 2003. A few of the more significant changes are listed below:
* Official fees for trademark applications have been
reduced to HK $1,300, and there are no longer
separate fees for publication and registration
* Hong Kong now recognizes well-known marks
* Hong Kong has adopted International Classes 43-45
* Multiclass applications are now accepted
* Collective trademarks are now registerable
* Parts A and B of the Register have been removed
* The initial term of a trademark registration is 10
years
* Trademarks can be renewed every 10 years
Applications filed under the old law that have not yet reached the advertisement stage can be examined under the new law if the applicant serves an irrevocable notice on the Registry. If proper notice is served, the applications will be deemed filed on April 4, 2003. These applications can then be re-examined under the new law.
Registered trademarks will be transferred directly to the new register, but will only have a 7 year initial registration term before they expire. Upon expiration, these trademark registrations can then be renewed every 10 years.
These are only a few highlights of the new Hong Kong trademark law. For further details or for assistance with your marks in Hong Kong, please contact Global Trademarks, Inc.
Patent Protection Available: PAPUA NEW GUINEA
As of July 1, 2002, patent and design protection is now available in Papua New Guinea. For further information on how the new Patents & Industrial Designs Act of 2000 can help protect your valuable intellectual property rights, please contact Global Trademarks, Inc.
Trademark Filings: CAMBODIA and LAOS
Cambodia and Laos share many of the same procedures and requirements relating to trademark filings. One important point to note is that both Cambodia and Laos award trademark rights on a “first to file” basis. Thus, due to the proximity of these two countries and the resulting potential for trademark infringement, it is wise to file applications in both jurisdictions simultaneously and as early as possible.
If you are interested in trademarks services in Cambodia and/or Laos, please contact Global Trademarks, Inc. for our complete fee schedules and further information.
USTR Releases Country Watch Warnings
The office of the United States Trademark Representative (USTR) has recently released a list of countries in which trademark infringement risks are high. For further details on ways we can assist you with monitoring and ceasing any unauthorized use of your marks, please contact Global Trademarks, Inc. for information on anti-counterfeiting and watch services.
Global Trademarks, Inc. Has Expanded!
In an effort to provide hassle-free worldwide trademark filings from the convenience of one office, Global Trademarks, Inc. has expanded the number of countries in which it provides trademark services. Global Trademarks, Inc. now offers trademark services in over 100 countries including, searches, renewals, name/address changes, recordal of assignments and mergers, watch services as well as litigation support. As a result of this expansion, Global Trademarks, Inc. has enhanced its worldwide database to include comprehensive documents, laws, and requirements for filing and maintaining trademarks in each country. The goal at Global Trademarks, Inc. is to save clients time and money by providing superior foreign trademark services at competitive rates.
Coming Next Quarter…
Madrid Protocol
Effective November 2, 2003, the United States Patent and Trademark Office will begin accepting applications under the Madrid Protocol. Next quarter, we will discuss the pros and cons of Madrid filings, along with the basic requirements.
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