In Venezuela, as a consequence of the
Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015,
there has been a significant increase in the official fees for procedures for
The Reform has also complicated the handling of
payment of fees for registration, renewal and recordals of changes of
ownership, changes of address and licences in the area of trademarks.
Experience has shown us that in Venezuela steps
must be taken as far in advance of the due date as possible, given that
payments of fees must be transferred to the account of the Autonomous
Intellectual Property Service (SAPI) and once the transfer has been completed,
the transfer receipt must be officially stamped. It is not uncommon to
encounter extraordinary bureaucratic obstacles, which lead to delays.
Furthermore, the U.S. Government recently
imposed economic sanctions on Venezuela, which also have an impact in the field
of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring
transactions made in dollars to accounts in Venezuela, which can lead to
considerable delays in the completion of payments. These obstacles can have
significant consequences for trademark rights. If we consider, for example, the
renewal procedure, in relation to which there are no provisions under
Venezuelan legislation for a grace period beyond the expiry date, the payment
of the official fee (which for one trademark in a single class currently
amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry
date of the trademark, otherwise it will be declared abandoned.
It is therefore advisable to keep in mind that
in Venezuela, with respect to those procedures requiring payment of a fee
affected by Article 6 of Decree No. 1398, it is necessary to act well in
advance of the deadline.
Indonesia joins the Madrid System having submitted some of
the most common declarations permitted under the Madrid Protocol. The
Indonesian Trademark Office will be able to extend the time limit for refusal
of the trademark to 18 months, by virtue of Article 5.2 b) of the Protocol, and
will be able to charge an individual fee for applications, subsequent
designations and renewals affecting Indonesia, pursuant to the provisions of
Article 8.7. The Indonesian government has also made the declaration provided for
under Rule 20bis(6) of the Common Regulations, indicating that recordals of
licenses on the International Register shall have no effect in Indonesia. For
recordals of licenses to have effect, it will be necessary to file the
appropriate recordal application with the Indonesian Office.
There are certain particularities in legal and
administrative practice in Indonesia regarding the prosecution of trademarks.
For example, national applications must be accompanied by a Bona Fide
Statement. For the time being, the Madrid System does not appear to have
developed any formula for adapting this requirement laid down at national level
to the international level. Other member countries of the Madrid System have
addressed this requirement by formulating an ad hoc document or including an
express declaration on the international application form. It remains to be
seen how the Indonesian authorities will adapt those specifications of
goods/services that have been deemed acceptable by the home office or WIPO to
the sui generis practice in Indonesia. Such issues will arise in day-to-day
practice and it will be necessary to work closely with our network of local
agents to adapt to the new situation and guarantee the best possible strategy
for trademark owners with interests in Indonesia.
Philippines there has been an important legislative change concerning the
maintenance of trademark rights. The change involves a new Declaration of
Actual Use (“DAU”), as established by the Intellectual Property Office of the
Philippines (IPO) in Circular No. 17-010 (2017 Trademark Regulation), in effect
since 1 August 2017.
seem that this change derives from the need to adapt Philippine trademark
legislation in line with the provisions of the Madrid Protocol, although there
may also be other reasons such as a desire to restrict exclusive rights from
being obtained in defensive marks or perhaps even to introduce a new official
fee. However, our task here is not to analyse the reasons for the changes but
to explain them as simply as possible.
Up to now,
to preserve trademark rights in the Philippines it has been necessary to attest
to use by submitting a DAU and evidence of the use. Under the new Trademarks Act, it has been required to attest to use at different points in the lifetime of the mark:
third anniversary of the filing date of the trademark application,
Between the fifth
and sixth anniversary of the date of registration of the mark, and
fifth and sixth anniversary of the date of renewal of the mark
No. 17-010 establishes an additional DAU to those already required under the
existing legislation, which must be filed within one year from the date of
renewal of the mark.
requirement to submit the DAU affects Philippine national marks, international
marks designating the Philippines and subsequent designations of the
Philippines for international marks. If a mark has been protected through the
international registration system, while the term is also one year, it is
calculated from the date of renewal of the international mark.
No. 17-010 is certainly complex, as it appears to indicate that the requirement
to submit the new DAU will be applied with retroactive effect to marks that
have been renewed since 1 January 2017, and at the same time it appears to
state that this requirement must be met for all marks within one year from its
practice, for each trademark that is to be kept in force in the Philippines, a
DAU will have to be submitted within the established term of one year from the
renewal date and that same formality will have to be carried out again at each
10-year cycle during the lifetime of the registration.
In the more
immediate term, those owners of trademarks which were due for renewal from 1
January 2017 will have to satisfy the requirement of submitting the DAU before
the end of the one year term from the date on which the registration was set to
expire. Those owners that have renewed their marks in the course of 2017 and
wish to keep them in force, will have to keep in mind that they must comply
with this requirement within the time limit.
retroactive effect will not really exist in relation to international marks
because the Philippines acceded to the Madrid Protocol on 25 July 2012.
Therefore, the first international marks designating the Philippines will not
be due for renewal until 2022. In this regard, Article 14.5 of the Madrid
Protocol establishes that with respect to international registrations made
under the Protocol prior to the accession thereto of the State in question,
subsequent designations of protection in that State are not possible, and
therefore there would not be any subsequent designations of trademarks in the
Philippines that would be affected retroactively by this new requirement. In
the case of international marks, it is a change to bear in mind in the longer
Thailand has recently deposited its instrument of accession to the Madrid Protocol and it has become the 99th member of the Madrid System concerning the International Registration of Marks.
the accession of Thailand, fewer and fewer Southeast Asian countries remain
outside the international trademark registration system. This new accession
will make the internationalization of trademark rights easier for rightholders
through simplified protection strategies in a highly popular jurisdiction.
Over the past few years, Thailand has been working on
harmonizing its local registration system and preparing to join the
International System. For example, they have adapted their local classification
of goods and services "item by item" in line with a more homogeneous application of the Nice Classification. However, in
Thailand there are legal and administrative peculiarities, such as, for
example, the requirement to associate trademarks belonging to the same
We shall see how the Department of Intellectual Property (DPI) handles the new scenario
regarding international registration of trademarks.
It is extremely difficult to describe in just a few short lines the number and kind of the many different echoes of the Barcelona INTA Meeting resounding within the ELZABURU Firm, which celebrated its 150th anniversary less than two years ago. This was the first time ELZABURU has had the pleasure and the responsibility of organising a social event at INTA and thus also the first time all of us, who are part of the Firm, have endeavoured to bring together, host, and entertain so many friends, colleagues, and associates in our midst. That may be why we tried to offer them all something different, something special, something unforgettable this past 20th of May. We strust we succeeded.
Most importantly, the Barcelona INTA Meeting was also the first time our country has had the chance to host one of the largest and most far-reaching events in the intellectual property sector. What more could anyone ask?. All that remains is for us to express to the INTA Board our appreciation for the confidence it has placed in Spain; to one of our country's most emblematic cities, Barcelona, for its sunshine, its joie de vivre, its people, and its cosmopolitan vibes; and, last but not least, to all those who have been placing their confidence in the dependability, professional excellence, and forward thinking of the ELZABURU Firm.
Through a decision dated 22 January 2014 EUIPO’s
Second Board of Appeal confirmed the refusal of the application for the
EU Trademark No.
which had been filed for a broad range of goods and
services in classes 9, 35, 39, 40, 41, 42 and 45.
The reason for the refusal is that EUIPO found that
the mark was devoid of distinctive character and that it merely informed
consumers of the quality of all the goods and services at issue, without
exception. The Office thus adopted a general reasoning in respect of all of
This decision was annulled by the General Court (case T-222/14 (in Spanish) which,
after considering whether the Office had examined in sufficient depth the
distinctive character of the sign at issue in relation to all the goods and
services for which the application had been filed, held there to be a flaw in
the reasoning of the Board of Appeal.
The appeal to the Court of Justice (case C-437/15P) therefore centered
on the question of whether EUIPO should assess the capacity of a sign to
identify a given business origin with
respect to each and every one of the goods or services, or whether, on the
other hand, a global analysis of the goods or services will suffice if the
Office finds them to have some relevant characteristic in common.
As we are all aware, EUIPO is under an obligation to
state the reasons for its decisions, in order that the interested parties may
know why their trademark is being refused access to the register and also that
the courts of the EU may be in a position to oversee the legality of the
When a trademark application is filed, the Office
should indeed carry out an assessment of the capacity of the sign in question
to distinguish the goods and services it covers. This will entail, in
principle, an analysis of each and every one of those goods and services.
However, an exception to this rule arises when the goods and services are
interlinked in a sufficiently direct and specific way, to the point where they
may be grouped in homogeneous categories. In that event the Office may confine
its assessment to each of those categories.
The General Court relied on the order of 18 March 2010
(in case C-282/09P) to distinguish different categories into which the goods
and services of the rejected mark could be grouped (cinema, advertising,
storage and transport of goods, etc.), maintaining that they were very
different in their nature, characteristics and purpose and that the Office
should therefore at least have analyzed each of the homogeneous categories
within the application.
EUIPO’s position, in contrast, was that
if all the goods and services have a characteristic in common, which in the
present case would be that they are all of superior quality, they may be
regarded as forming a single category and, therefore, a general statement of
reasons will suffice. The systematic repetition of the basic ground for the
refusal, which is that the sign is devoid of distinctive character in respect
of each and every one of the goods and services, may thus be avoided.
The Court of Justice annulled the judgment of the
General Court, holding that the latter should have:
1.Checked whether the mark applied for, which comprises
a word and a figurative element, could be perceived, directly and immediately,
as a claim of superior quality or a laudatory message, rather than as an
indication of the business origin of the goods and services. In the
affirmative, the refusal of the application would be fully justified without
the need for an examination of the sign in relation to all of the goods and
2.Checked whether the word element of the sign,
“deluxe”, indeed conveyed the idea of superior quality or whether it could have
a different meaning. In the latter event the mark could have a sufficient
degree of distinctive character in respect of some of the goods or services. In
that case an assessment of each of them would be required and different
conclusions could be reached.
The Court of Justice held that the General Court had
failed to appreciate that, despite their differences, all the goods and
services at issue could have a common characteristic relevant to the analysis
of the absolute prohibitions on registration which could justify their being
grouped in a single homogeneous category and the consequent use of general
reasoning in relation to them all.
The case has been referred back to the General
Court and we shall therefore have to wait for a final decision on the