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06-14-2017
Manon Alexandre, Inlex IP Expertise, France
Sabrina Florindo, Inlex IP Expertise, France
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Three and two-dimensional trademarks: They are fighting...


Manon Alexandre, Inlex IP Expertise, France, Sabrina Florindo, Inlex IP Expertise, FranceThe Seventh Chamber of the Court of Justice of the European Union recalled, on May 4, 2017, in the decision AUGUST STORCK KG vs. EUIPO (C-417/16P), that precedents regarding criteria for assessing the distinctive character of three-dimensional trademarks consisting of the shape of the product itself, also apply in respect of device trademarks consisting of the two-dimensional representation of the product.
On August 1, 2013, AUGUST STORCK KG filed an international trademark application designating the European Union consisting in a figurative sign representing a square-shaped packaging, with a white wave over blue font and grey edges, for goods in class 30. On August 14, 2013, the European Office, considering that the sign at stake was not sufficiently distinctive, issued a provisional total refusal of protection. This decision was upheld by the Examination Division. Then, the Board of Appeal also considered that
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06-13-2017
Sophie Davies, HSM IP, Cayman Island

New Cayman Islands Trade Marks and Designs Laws Will Be...


Sophie Davies, HSM IP, Cayman IslandThe Trade Marks Law, 2016, the Design Rights Registration Law, 2016 and the Patents and Trade Marks (Amendment) Law, 2016, which were passed late 2016, will be implemented in the Cayman Islands on 1 August 2017. The practice of re-registering UK and EU trade mark registrations to the Cayman Islands will end on 31 July 2017. As of 1 August 2017, the Cayman Islands Intellectual Property Office (CIIPO) will only accept national Cayman Islands applications, filed by a registered agent in the Cayman Islands. No power of  read more

05-31-2017
Edward F. Maluf, Seyfarth Shaw LLP, USA
Brian L. Michaelis, Seyfarth Shaw LLP, USA
Kenneth L. Wilton, Seyfarth Shaw LLP, USA


How Not to Prove a Mark is Generic. Use of GOOGLE as a ...


Edward F. Maluf, Seyfarth Shaw LLP, USA , Brian L. Michaelis, Seyfarth Shaw LLP, USA , Kenneth L. Wilton, Seyfarth Shaw LLP, USA The Ninth Circuit Court of Appeals explained recently in Elliot v. Google that use of the GOOGLE trademark as a verb, “e.g. google it,” does not alone cause the mark to become generic. The question presented was whether the public’s use of “google” as a verb referred to the Google search engine, or whether it was directed more generally to the covered goods or services, i.e. search engines. In affirming a grant of summary judgment in Google’s favor, the Court emphasized the necessary and inherent link between genericide and a particular type of good or service and that trademarks can be used in forms other than adjectives without being rendered generic.
Plaintiffs relied on their argument that verb use constitutes generic use as a matter of law and therefore the lower court’s ruling in Google’s favor was inappropriate. The Court, however, disagreed with this proposition, focusing on two points that Plaintiffs failed to recognize: first, that a claim for genericide “must always” relate to a particular type of good or service; and second, that
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05-30-2017
Carmen Piscoya, OMC Abogados & Consultores, Peru

Peru: The Border Measures in Safeguard of the Intellect...


Carmen Piscoya, OMC Abogados & Consultores, PeruIntellectual Property enforcement and border measures are important to detect those foreign trade operations in which the rights of intellectual property are violated. Well-known trademarks are those which have such a great reputation that they are capable of protection and distinction worldwide, no matter the country or class they are protected for. A major role of public authorities and also private companies in assuming the great challenge of ensuring the observance of Intellectual Property Rights is being implemented by improving  read more

05-17-2017
Julia Zhevid, PETOŠEVIĆ, Russia
Tatyana Kulikova, PETOŠEVIĆ, Russia
First published on www.petosevic.com


Eurasian Economic Union Moves Forward with Customs Code...


Julia Zhevid, PETOŠEVIĆ, Russia, Tatyana Kulikova, PETOŠEVIĆ, Russia, First published on www.petosevic.comThe Customs Code of the Eurasian Economic Union (EAEU) may enter into force this year, as the last EAEU member state, Belarus, signed it this month. All other member states signed it in December 2016.
The Code still needs to be ratified by all five members – Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. During INTA’s Pre-Annual Meeting Roundtable held on March 28, 2017 in Moscow, a Eurasian Economic Commission (EEC) representative specified that the entry into force could be expected in December 2017 or January 2018.
The new Code provides for the establishment of the EAEU Customs Register that will be kept by the EEC and that will exist alongside national customs registers. According to Article 385 of the Code, in order to enter trademark, service mark, geographical indication or copyright and related rights into the EAEU Customs Register, a rights holder will have to submit a request and all other necessary documents confirming the rights in all EAEU member states directly to
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04-26-2017
William Giltinan, Carlton Fields, USA
C. Douglas McDonald Jr., Carlton Fields, USA
First published on www.mondaq.com


United States: USPTO Tightens Requirements For Commerci...


William Giltinan, Carlton Fields, USA, C. Douglas McDonald Jr., Carlton Fields, USA, First published on www.mondaq.comOn March 21, 2017, the USPTO implemented changes to its requirements for continued use of trademarks in commerce that will require some trademark owners to provide additional materials and documentation when they renew their registrations. Registrants need to be aware that they may be randomly selected for this program, and understand what will be required of them if they are selected. For a trademark to be federally registered, it must be used in commerce in the United States in connection with all of the goods and services recited in the application. To enforce this requirement, the Trademark Office requires that applicants provide specimens showing the mark being used in connection with actual goods or services. Prior to this recent change, the USPTO has required only one specimen of use in each International Class for which a trademark is registered. For example, if a company sells compact disks (CDs), CD recorders and related products, such as cables, all in International Class 9, the PTO previously  read more

04-12-2017
Simon Gapes, Griffith Hack, Australia
First published on www.griffithhack.com


Look who’s smiling – Crocodile International wins New Z...


Simon Gapes, Griffith Hack, Australia, First published on www.griffithhack.comThe New Zealand Supreme Court has recently issued a decision in the long running dispute between fashion brands Crocodile International Pte Ltd and Lacoste regarding whether a trade mark registration held by Lacoste dating from 1961 should be revoked for non-use. The decision is significant in that the court decided there is no discretion to retain trade marks not in use on the register (unless there are special circumstances) and provides clarity around what constitutes “use” of a trade mark. The case revolved around the registered trade mark  read more


Inlex IP Expertise



Mr Franck Soutoul

Mr Franck Soutoul
5, Rue Feydeau
75002 Paris
France (FR)
Tel +33 (0) 1 5659 7090
Fax +33 (0) 1 5659 7091
fsoutoul@inlex.com
www.inlex.com

INLEX IP Expertise is an Intellectual Property law firm specialized in the validation, protection, defense and valorization of projects for the creation of trademarks, designs, copyrights and commercial and marketing concepts.
Created in 1995 by Franck Soutoul and Eric Schahl, the firm employs 75 people and is now present in Europe - France (7 agencies), Monaco and Africa (3 agencies : Morocco, Cameroon & Mauritius).

Being registered representatives in France, Monaco, OAPI, the European Union (EUIPO) and in the World Intellectual Property Organization (WIPO) we are entitled to act at the international level and our network of the trusted experts enable us to carry out the following actions:
- Trademark availability searches
- Registration and renewal of trademarks, designs and domain names
- Monitoring of trademarks, designs, domain names, websites and references in search engines
- Opposition to the registration
- Administrative complaints
- Seizure procedures in infringement cases.