Friday, 3 November 2017

Indonesia becomes the 100th Member of the Madrid Protocol

On 2 January 2018, the Madrid Protocol will take effect in Indonesia. Following Thailand’s accession to the Protocol some weeks ago, this is a natural and expected development.

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.

Author: Cristina Arroyo

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Monday, 23 October 2017

Philippines – New Declaration of Actual use for maintenance of trademark rights

In the 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.

It would 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:
  • By the 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 
  • Between the fifth and sixth anniversary of the date of renewal of the mark
Circular 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.

The 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.

Circular 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 renewal date.

In 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.

This 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 term.

Author: Cristina Arroyo

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Tuesday, 12 September 2017

Thailand joins the Madrid System

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. 

With 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 proprietor. 

We shall see how the Department of Intellectual Property (DPI) handles the new scenario regarding international registration of trademarks.

Author: Cristina Arroyo

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Thursday, 29 June 2017

Reverberations of INTA

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.

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Author: Luis Beneyto

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Wednesday, 24 May 2017

The European Union calls for a “Deluxe” decision

Through a decision dated 22 January 2014 EUIPO’s Second Board of Appeal confirmed the refusal of the application for the trademark

EU Trademark No. 011253044 (Refused)
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 them.

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 decision.

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 services.

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 substance. 

Author: Soledad Bernal

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Friday, 19 May 2017

Trademarks in Spain: a step by step by guide

ELZABURU partners Luis Baz and Fernando Ilardia offer a complete and easy to follow guide about trademark registration in Spain: how to apply for your trademark, refusals, oppositions and so on

Spanish chapter

Reproduced with permission from Global Legal Group (published in May 2017)

Wednesday, 17 May 2017

Getting to grips with functional marks

The Court of Justice of the European Union (CJEU) issued a judgment on 11 May 2017 (Case C-421/15P) in relation to the interpretation of the prohibition on registration as a trademark of “signs which consist exclusively of the shape of goods which is necessary to obtain a technical result” laid down in Art. 7.1 e) ii) of the Regulation on the European Union trade mark.
In 2002 and 2003 the Japanese company Yoshida Metal Industry secured the registration of two figurative European Union trade marks, for certain items of cutlery in class 8 and kitchen utensils and containers in class 21, consisting of the two-dimensional representation of a series of black dots:
(EUTM No. 001371244)

EUTM No. 001372580
The marks were used in practice on the handle of the knives sold by Yoshida and represented a series of concave dots or dents on the handle of the cutlery which performed a non-slip function when cutting (and which were also protected by various patents):
In 2007, the companies Pi-Design AG, Bodum France SAS and Bodum Logistics A/S applied at the EUIPO for the marks to be declared invalid on the basis of Article 7.1 e) ii), given that the signs consisted exclusively of the shape of a product which is necessary to obtain a technical result.
The EUIPO accepted the applications for a declaration of invalidity and cancelled the registrations of the trade marks.
The CJEU has now dismissed the appeal lodged by Yoshida, upholding the invalidity of the trade marks.
The judgment accepts and confirms, on the one hand, the arguments previously asserted by the General Court in its judgment of 6 March 2014 (C-337/12 P y C-340/12 P) (see a comment in this blog), establishing that the prohibition on registration laid down in Art. 7.1 e) ii) must apply both to two-dimensional and three-dimensional trade marks and declaring that said prohibition on registration was in the public interest, insofar as companies cannot use trade mark law to extend indefinitely the protection of technical solutions. Moreover, it states that for a correct application of the provision it is necessary to identify the essential characteristics of the trade mark, carrying out a case-by-case assessment.
Moreover, it is important to mention the CJEU’s current interpretation of Art. 7.1 e) ii), holding that registration as a trademark should only be refused where “all of the essential characteristics of the sign are functional”, that is, the Court considers that in the disputed trade marks, the specific configuration of the black dots is a significant functional element, which means that they cannot be registered as trademarks and, consequently, they must be declared invalid. In this regard, the Court specifies that the prohibition on registration laid down in Art. 7.1 e) ii) may be overcome and the sign may be registered as a trademark where it includes other relevant non-functional components (such as, for example, decorative or fanciful elements).
The Court has undertaken a strict interpretation of Art. 7.1 e) ii) with regard to registration of this type of mark consisting of the shape of a product, to thus prevent companies achieving a monopoly on the technical solutions or functional characteristics of the product. The judgment is also interesting in terms of the detailed definition of all of the mandatory requirements for this type of mark to qualify for registration as a trademark.

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