May 13, 2024 (Newsletter Issue 4/24)
Revised Regulation on Geographical Indications Entered into Force
The revised regulation on geographical indications (GIs) for agricultural products, wines, and spirit drinks, which was published in the Official Journal of the European Union on 23 April 2024, has officially entered into force on May 13, 2024.
This significant legislative update streamlines previous procedures into a single framework designed to improve the efficiency of the GI registration process—a clear indication of the EU's dedication to protecting the intellectual property rights of producers across the Union.
With this regulation now active, the European Union Intellectual Property Office (EUIPO) is responsible for establishing and maintaining the Union Register for GIs.
Source: www.euipo.europa.eu
Mar 15, 2024 (Newsletter Issue 3/24)Revised Rules of Procedure of the Boards of AppealThe revised Rules of Procedure of the Boards of Appeal (BoA RoP) entered into force on 1 March 2024. The amendments primarily aim to ensure an alignment of the terminology used throughout the document, effectively mirroring the current Regulations in force.
Noteworthy is also the enhanced clarity in articulating the competences assigned to different actors within the Boards of Appeal. In terms of substantive modifications, the most significant changes concern the calculation and extension of time limits (Article 3 BoA RoP), procedures for suspensions (Article 44 BoA RoP), as well as provisions concerning alternative dispute resolutionat the appeal stage (Articles 33 to 34 BoA RoP).
A new revision cycle was established for the BoA RoP in the BoA Action Plan 2021-2026, involving a structured dialogue with the internal and external stakeholders. Following the first revision cycle and internal and external consultations, the updated BoA RoP were adopted by the BoA Presidium on 12 December 2023 by Presidium Decision 2023-22. This project aims to streamline the BoA RoP and make them more practical, comprehensive, and user-friendly in order to enhance the transparency, accountability, and the overall quality of services provided by the BoA.
The revised BoA RoP are available here.Source: www.euipo.europa.eu Dec 09, 2023 (Newsletter Issue 10/23)
Enhancements to eSearch Case Law
On 9 December, significant enhancements to eSearch Case Law went live, as part of the ongoing strategic project 'Improve eSearch Case Law'. The first set of Basic IT features has just been completed and is now available. It introduces several functionalities designed to make the user experience more efficient.
Moreover, new improvements have been implemented in order to enhance the display of search results and to facilitate support.
The second round of IT features is planned for next year. It promises additional enhancements to further elevate the eSearch Case Law database.
Source: www.euipo.europa.eu
Oct 18, 2023 (Newsletter Issue 10/23)Protection of Geographical Indication ExtendedOn 16 November, the Regulation on GI protection for craft and industrial products (CIGIR) entered into force.
The main goal of this law is to create a unified EU-wide protection system that preserves the names of regionally acclaimed crafts and industrial products like glass, lace, or natural stones. This protection aims to safeguard traditional know-how and cultural heritage. Furthermore, the regulation will bring consistency to the various national frameworks that have historically managed the registration, validation, and enforcement of geographical indications. The new system will provide a level of protection for GIs of non-agricultural products, considering the distinct nature of craft and industrial items.
The new system will be applicable from 1 December 2025. From this date, it will be possible to apply for registration of a GI. Existing national rights will cease to exist one year after, on 2 December 2026.
For more details click here.Source: https://www.euipo.europa.eu/ Sep 07, 2023 (Newsletter Issue 7/23)
Extension of Time Limits - Ukraine
The Executive Director has issued Decision EX-23-7 granting a new extension of time limits to all parties in proceedings before the Office having their residence or registered office in Ukraine.
The new two-month extension entered into force on 7 September 2023 and extends until 16 November 2023 all time limits expiring between 15 September 2023 and 15 November 2023 inclusive. It follows Decisions EX-23-6, EX-23-5, EX-23-1, EX-22-9, EX-22-8, EX-22-5, EX-22-4 and EX-22-2 of the Executive Director which had extended previous time limits.
Source: www.euipo.europa.eu
Jun 22, 2023 (Newsletter Issue 6/23)
Changes to Contact Details
EUIPO has made some changes in how and when you can contact the Office.
The changes are aimed at broadening the service offered by the Information Centre in line with a new approach to tailor our services to different customer groups.
Please take note of the following updates:
By phone:
Please call +34 965 139 100
As of 12 June 2023, the phone number +34 965 139 400 (e-business support) is no longer in use
By e-mail:
Please mail to CustomerCare@euipo.europa.eu
As of 12 June 2023, the new email address replaces two previous email addresses: information@euipo.europa,eu, e-businesshelp@euipo.europa.eu
After hours (for emergency situations only*):
Please call +34 965 137 605
*For example, if you are facing a deadline and experiencing technical issues that require assistance.
As of 19 June 2023, the service will be available from 18.30 until 23.59, from Monday to Friday (excluding EUIPO official holidays). Assistance will be provided in English or Spanish.
Source: www.euipo.europa.eu
Jun 01, 2023 (Newsletter Issue 6/23)New Pre-assessment ChecksNew pre-assessment checks are now available to European Union trade mark (EUTM) applicants.
With the click of a button, applicants can now run some of the checks that are usually carried out by EUIPO examiners. In this way, problems can be detected before filing.
Currently, applicants can use the feature to automatically check whether a trade mark is deceptive, offensive (in any EU language), is registered as an EU domain or if it is in conflict with a plant variety.
Further developments of pre-assessment checks are also planned, such as whether a trade mark is distinctive or descriptive, if it conflicts with a geographical indication, if it conflicts with Article 6ter (flags, emblems, etc.) or if a similar mark has been rejected for similar goods and services. Some of these features will be powered by artificial intelligence, providing a more seamless and user-friendly experience for applicants.
For more information click hereSource: www.euipo.europa.eu May 08, 2023 (Newsletter Issue 5/23)
Paraguay Joins TMclass
The National Directorate of Intellectual Property of the Republic of Paraguay (DINAPI) joined TMclass on 8 May 2023 and started using and accepting the terms from the alphabetical list of the Nice classification in Spanish.
TMclass offers users the opportunity to search for and translate goods and services to and from any of the 44 languages available as well as verifying the terms’ correct classification under the Nice classification.
Source: https://tmclass.tmdn.org
Mar 23, 2023 (Newsletter Issue 4/23)Guidelines for Examination in 23 LanguagesThe current edition of the EUIPO Guidelines is now available in 23 official languages of the EU.
In addition to the new translations, all linguistic versions of the Guidelines are now more interactive after the addition of over 5,000 new hyperlinks directing users to provisions of trademark regulations and laws, judgments, and decisions in the eSearch.Source: www.euipo.europa.eu Mar 23, 2023 (Newsletter Issue 4/23)
Germany Ratified Agreement on UPC
On 17 February 2023, Germany deposited its instrument of ratification of the Agreement on a Unified Patent Court (UPC). With this deposition, Germany enabled the Agreement's entry into force.
The Sunrise Period for the UPC will start on 1 March 2023. On 1 June 2023, the Unified Patent Court will take up its work and decide with direct effect on patent disputes of an initial 17 states such as Germany, France, Belgium, Bulgaria, Denmark, Estonia, Finland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Austria, Portugal, Sweden, Slovenia.
Source: www.epo.org
Feb 16, 2023 (Newsletter Issue 3/23)New EU Trademark Filing Form On 1 February 2023, EUIPO informs that the new electronic form for EU trademarks (EUTMs) replaces the 5-Step Form and Advanced Form for trademarks. The new online form is more intuitive, easier to use and has new features with customized option and enhanced security.
For more information and webinar, please click hereSource: www.euipo.europa.eu Feb 16, 2023 (Newsletter Issue 3/23)
Extension of Time Limits – Ukraine
On 7 February 2023, EUIPO has issued Decision EX-23-1 granting a new extension of time limits to all parties in proceedings before the Office having their residence or registered office in Ukraine.
The new two-month extension published on 30 January 2023 applies to all time limits expiring between 2 February 2023 and 2 April inclusive until 3 April 2023. It follows Decisions EX-22-9, EX-22-8, EX-22-5, EX-22-4 and EX-22-2of the Executive Director which had extended previous time limits.
Source: www.euipo.europa.eu
Jan 26, 2023 (Newsletter Issue 2/23)New Requirements when Submitting Evidence to EUIPO EUIPO has published Decision No EX-22-7 introducing several changes to EUIPO's rules for filing evidence on data carriers from 1 February 2023.
EUIPO informs that only unlayered PDFs files with a maximum size of 20 MB for each individual file will be acceptable. Encrypted, executable and/or compressed files will not be accepted by the Office.
If an annex submitted on a data carrier complies with the requirements of this Decision, the Office will upload it into the electronic file (DAS). If the combined size of all files on the data carrier exceeds 1 GB, the data carrier is still accepted, but the Office is not obliged to upload the data carrier content into the electronic file as there may be technical constraints to do so.
It should be noted that the Office will deem an annex or part of an annex as not filed when the requirements as stipulated in the Decision have not been met. Further, the Office will not invite the party to overcome the deficiency.
For more information, please see hereSource: www.euipo.europa.eu Dec 01, 2022 (Newsletter Issue 17/22)
Extension of Time Limits - Ukraine
EUIPO informs about a new extension that has been granted for all parties in proceedings before the Office having their residence or registered office in Ukraine.
The new three-month extension published on 31 October 2022 extends all time limits expiring between 2 November 2022 and 1 February 2023 inclusive, until 2 February 2023. This extension follows Decisions EX-22-8, EX-22-5, EX-22-4 and EX-22-2, of the Executive director.
Source: www.euipo.europa.eu
Oct 20, 2022 (Newsletter Issue 15/22)IP Decision-Drafting Tool Implemented by Bulgarian IP OfficeThe Bulgarian Patent Office implemented the “Decision Desktop” software on 21 September 2022, becoming the first IP Office to fully implement the new tool integrated into their internal Back Office system.
Decision Desktop aims at facilitating the decision-making process for examiners in order to improve consistency and predictability of decisions made by IP Offices in Europe. It does this by providing IP offices with an interface to create and maintain standard wording and letter templates to assist examiners through increased content automation.
EUIPO invites other IP Offices to participate in this initiative.
For more information, please check hereSource: www.euipo.europa.eu Oct 06, 2022 (Newsletter Issue 14/22)Guide on Cybercrimes and Trade Secret Protection in EU & ChinaOn 19 September 2022, the European Commission published a guide on cybersecurity and trade secrets protection in the EU and China. The guide provides EU small and medium-sized enterprises (SMEs) with an overview of cybersecurity risks to trade secrets protection, as well as measures SMEs can take against potential cybercrime and remedies in the event of cyber theft of intellectual property.
The guide can be downloaded here Source: www.op.europa.eu Sep 22, 2022 (Newsletter Issue 13/22)Extension of Time Limits - UkraineEUIPO informs about a new extension that has been granted for all parties in proceedings before the Office having their residence or registered office in Ukraine.
The two month extension published on 28 August 2022 extends all time limits expiring between 2 September 2022 and 1 November 2022, inclusive, until 2 November 2022.
This extension follows earlier Decisions EX-22-5, EX-22-4 and EX-22-2 of the Executive Director, which respectively extended all time limits expiring between: 2 June 2022 and 1 September 2002; 1 April 2022 and 1 June 2002; and 24 February 2022 and 31 March 2022.
For more information, please click here Source: www. euipo.europa.eu Sep 22, 2022 (Newsletter Issue 13/22)IP Key China Project to Advance Convergence of Chinese, EU and International IPR StandardsAccording to the EUIPO, the IP Key project has helped EU companies, businesses and innovators establish or expand in the Chinese market over the past five years.
The next phase of the IP Key China project intends to advance convergence of Chinese, EU and international standards in IPR protection, with greater focus on law enforcement. Furthermore, it will concentrate on strengthening partnerships and strategic engagement with businesses operating in China, as well as industry associations. It will also aim at ensuring greater involvement of sectoral institutions in the EU and its Member States.
For more information, please click here Source: www.euipo.europa.eu Aug 11, 2022 (Newsletter Issue 11/22)First Oral Hearing Before the Grand BoardThe Grand Board of the EUIPO will be holding its first ever oral hearing in appeal cases on 9 September 2022 at 09:30.
The cases involve an invalidity request made inter alia by the Icelandic Ministry for Foreign Affairs against the British supermarket chain, Iceland, and deals principally with the alleged descriptiveness and non-distinctiveness of the figurative and word marks shown above in relation to a range of goods and services in Classes 7, 11, 16, 29, 30, 31, 32 and 35.
The language of these proceedings is English. The two cases will be heard together in a hybrid format and can be followed online by registering here
A limited number of places will also be made available at the EUIPO’s premises in Alicante for in-person attendees.Source: www. euipo.europa.eu Aug 11, 2022 (Newsletter Issue 11/22)Office Deploys IP AttachésThe EUIPO informs that it deploys ‘IP Attachés’ in geographical areas where there is a need to support and protect EU intellectual property interests. The IP Attachés work hand in hand with other EU staff in EU delegations in third countries to defend EU interests. The main objective is to offer a more tailored support to EU business. They are located in Buenos Aires, Brussels, Geneva, Bangkok and Beijing.
For more information, please click hereSource: www. euipo.europa.eu Jul 27, 2022 (Newsletter Issue 10/22)New EU Trademark Filing FormOn 1 August 2022, the EUIPO is launching a new electronic form for EU trademarks (EUTMs) that allows to file applications in a more guided and efficient way. This follows the ongoing work done on enhancing the efficiency and user experience of the website, taking into consideration the input received from users.
The new online form is more intuitive, easier to use and has new features, including:
- customization options allowing you to tailor your filing experience;
- a new design with full guidance and contextual help;
- faster goods and services management;
- enhanced security.
The Office plans to completely replace the existing form with this new form by the end of November 2022.
A webinar and more information can be seen here Source: www.euipo.europa.eu Jul 14, 2022 (Newsletter Issue 9/22)
Albania and Haiti Use Harmonised Database of Goods/Services
The General Directorate of Industrial Property of Albania (GDIP) will use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass as of 27 April 2022.
In addition, the Industrial Property Service of the Ministry of Commerce and Industry of Haiti (SPIMCI) will use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass as of 13 June 2022.
Source: www.euipn.org
Jun 02, 2022 (Newsletter Issue 7/22)Proposal for EU Regulation on GIs for Craft/Industrial ProductsOn 13 April 2022, the European Commission presented the first ever EU framework to protect the intellectual property of European craft and industrial products. The framework will cover products that rely on the originality and authenticity of traditional practices from their regions.
The EUIPO and Member States’ designated authorities will play a key role in the system proposed by the European Commission.
The new scheme will enable a simple and cost-efficient registration of GIs by establishing a two-level application process. This will require producers to file their GI applications to designated Member States’ authorities, who will then submit successful applications for further evaluation and approval to the EUIPO. A direct application procedure to the EUIPO will also be possible for Member States that do not have a national evaluation procedure in place.
For more information, please click here Source: www.euipo.europa.eu; www.ec.europa.eu Apr 21, 2022 (Newsletter Issue 5/22)New Examination Guidelines in ForceThe latest edition of the Guidelines for Examination of European Union trademarks (EUTM) and registered Community designs (RCDs) entered into force on March 31, 2022.
The new edition of the Guidelines has been made more interactive with over 5,000 new hyperlinks to trademark regulations, the eSearch Case Law database, learning and other resources. It also incorporates recent case-law from the CJEU and changes in practice in a range of areas, among others, the public availability of decisions refusing EUTM applications on absolute grounds.
Further, the 'Common Communication on New Types of Marks: Examination of Formal Requirements and Grounds for Refusal (CP11)' concerning absolute and relative grounds for refusal has been implemented across several chapters.
Additionally, the new edition clarifies that the generic use of geographical indications (GIs) in the list of goods and services will be objected to. Furthermore, the Office will apply a more flexible approach to the wording of limitations relating to objections based on GIs.
In the area of registered Community designs, there is further alignment with EUTM practice in invalidity proceedings where the application filing date will no longer be determined by the fee payment date.
The Guidelines are currently available in English, French, German, Italian and Spanish.
For more information, please click hereSource: www. euipo.europa.eu Apr 21, 2022 (Newsletter Issue 5/22)
Virtual Assistant to Support Online Filings
EUIPO has launched its first chatbot, a virtual assistant that provides general information on basic questions and doubts users may have when applying online.
Compared to phone calls or emails, the chatbot can provide faster answers to common questions. However, between 8.30 a.m. and 6.30 p.m., users may still chat with a person if they continue to have questions.
Source: www.euipo.europa.eu
Apr 21, 2022 (Newsletter Issue 5/22)Extension of Time Limits for Ukrainian PartiesEUIPO informs that a new extension has been granted for all parties in proceedings before the Office having their residence or registered office in Ukraine.
The two-month extension published on March 30 extends all time limits expiring between 1 April 2022 and 1 June 2022, inclusive, until 2 June 2022. This extension follows Decision 22-2 of the Executive director, which already extended all time limits expiring between 24 February 2022 and 31 March 2022 inclusive until 1 April 2022.
For more information, please click here Source: www. euipo.europa.eu Feb 24, 2022 (Newsletter Issue 3/22)Consolidated Rules of Procedure for Appeal System RevisedEUIPO announces that the consolidated Rules of Procedure of the Boards of Appeal have been published on the EUIPO website following a revision and update.
The Rules of Procedure of the Boards of Appeal seek to increase transparency, consistency, and legal certainty for users of the appeal system, as well as streamlining the decision-making processes throughout the Boards of Appeal.
The new consolidated version can be found here
All amendments since the adoption on February 27, 2020, can be seen hereSource: www. euipo.europa.eu Jan 27, 2022 (Newsletter Issue 1/22)Changes Proposed to Public Availability of Rejection DecisionsThe Guidelines for Examination of European Union trademarks (EUTM) and registered Community designs are currently being revised. A new version is expected to enter into force in March 2022. Any changes of practice will take effect on the date of entry into force.
One of the proposed changes concerns the publication of decisions refusing an EUTM application on absolute grounds. With this change, those decisions issued after the entry into force of the new Guidelines will be made available in the eSearch case-law database the day after their notification irrespective of whether the decision becomes final.
In practice, this will alter the consequences of withdrawing an EUTM application during the two-month appeal period following the receipt of a refusal decision. Withdrawal in this period will still be possible (and the EUTM will appear as ‘withdrawn’ instead of ‘refused’ in eSearch Plus database), however the change will mean that the refusal decision will be publicly available in the eSearch case law database.
For more information, please check hereSource: www.euipo.europa.eu Oct 20, 2021 (Newsletter Issue 15/21)Pan-African IP Project LaunchedOn August 26, 2021, the Africa Intellectual Property Rights and Innovation Project (AfrIPI) was officially launched. It is a five-year EU-funded international cooperation project that aims to create, protect, and promote intellectual property rights in Africa.
The project involves collaboration with African governments, regional intellectual property organisations, civil society, academia, and the private sector, and carries out cooperation activities in the field of intellectual property. Furthermore, it involves the development of examination guidelines for trademarks and designs in OAPI, and of common guidelines on trademarks for ARIPO Member States. It has also raised awareness on plant variety protection (Arusha protocol), a centralised registration procedure for trademarks (Banjul Protocol), and IP rights favouring small and medium enterprises.
For more information, please click hereSource: www.euipo.europa.eu, www.internationalipcooperation.eu Oct 20, 2021 (Newsletter Issue 15/21)European Network of Authenticities Website LaunchedOn September 1, 2021, the EUIPO informs about the launch of a new European Network of Authenticities website. This initiative is designed to empower authorities at local level to engage citizens and other stakeholders with the aim of increasing intellectual property awareness at local level and enhancing the protection of IP rights. The network carries out a series of IP-related activities, like awareness campaigns, training courses for enforcement authorities and educational activities.
Currently there are five Authenticities which are Thessaloniki, Sofia, Plovdiv, Mykonos and Banská Bystrica. The latter named Slovak city was certified on September 29, 2021.Source: www.euipo.europa.eu Sep 09, 2021 (Newsletter Issue 14/21)New Tool for Examination of International Design RegistrationOn August 23, 2021, EUIPO has launched a new tool for the examination of International Design Registrations designating the European Union (EU). This tool has been developed in collaboration with the WIPO and is part of the back office of EUIPO’s examiners.
The new back office has been designed to increase the efficiency of design examination, including specific features to assist in the assessment of the consistency between the design views.
In addition, EUIPO sends cover letters to clients confirming the new protection granted within the EU via WIPO when an international design designating the EU is accepted by the Office.
For more information, please check hereSource: www. euipo.europa.eu Sep 09, 2021 (Newsletter Issue 14/21)Financial Support for SMEsEuropean small and medium-sized enterprises (SMEs) can now apply for financial support in the form of reimbursements for trademark and design application and for IP pre-diagnostic services (IP Scan), up to a maximum amount of EUR 1,500 per business.
The new application window runs until 30 September 2021, the last of the five application periods in 2021.
For more information, please check hereSource: www.euipo.europa.eu Jul 01, 2021 (Newsletter Issue 13/21)Uruguayan IP Office Aligned with CP5On June 22, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a practice paper under the Common Communication (CP5) — Relative grounds of refusal - Likelihood of confusion (impact of non-distinctive/weak components).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN).
The CP5 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jul 01, 2021 (Newsletter Issue 13/21)Albanian IP Office Aligned with CP3On June 17, 2021, the General Directorate of Industrial Property (GDIP) under the Ministry of Finance and Economy of the Republic of Albania has published a practice paper under the Common Communication on the Common Practice of Distinctiveness (CP3) - Figurative Marks containing descriptive / non-distinctive words.
The practice paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the GDIP and the IP offices of the European Union Intellectual Property Network (EUIPN).
The CP3 Practice Paper has been made publicly available in Albanian and English.Source: www.euipo.europa.eu Jun 17, 2021 (Newsletter Issue 12/21)'Out-Of-Commerce Works' Portal LaunchedOn June 7, 2021, the EUIPO launched a new Out-Of-Commerce Works Portal which includes out-of-commerce works such as books, films, or visual works that are still protected by copyright but are no longer or have never been commercially available.
Directive (EU) 2019/790 established a legal framework to support cultural heritage institutions such as European libraries, archives, museums in the digitisation and transnational dissemination of works in their collections.
The main purpose of the portal is to provide access to information about the ongoing and future uses of out-of-commerce works, as well as to make it easier for the rights holders of these works to exercise their rights. The regime will complement the measures already in place for the use of orphan works at European level.
For more information, please check hereSource: www.euipo.europa.eu Jun 17, 2021 (Newsletter Issue 12/21)Serbian IP Office Aligned with CP8 On June 10, 2021, the Intellectual Property Office of the Republic of Serbia (IPORS) has updated its methodology to include the principles of the Common Practice (CP8): Use of a trademark in a form differing from the one registered, which was developed by the European Union Intellectual Property Network.
IPORS is the first non-EU IP Office to adopt the criteria listed under CP8. The CP8 principles are included in the Practice Paper, which provides a clear and comprehensive explanation of the principles on which the practice is based. It assesses the impact of additions, omissions and modifications of characteristics, when these changes appear alone or in combination, on the distinctive character of registered word marks, figurative marks and composite marks (combinations of verbal and figurative elements).
The CP8 Practice Paper has been made publicly available in Serbian and English. Source: www.euipo.europa.eu Jun 17, 2021 (Newsletter Issue 12/21)Uruguayan IP Office Aligned with CP6 On June 2, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published as the first Latin American IP office the criteria developed under the Common Communication on the Common Practice – Graphic Representation of Designs (CP6).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice of the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN) is based, particularly on how to use appropriate disclaimers, types of views and how to represent designs on a neutral background.
The CP6 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jun 03, 2021 (Newsletter Issue 11/21)Online Form for Designs ImprovedOn June 1, 2021, the EUIPO informed that they made several enhancements to the online application form for registered Community designs (RCD). The user-experience has been improved, including additional guidance to avoid possible deficiencies during the examination of the application.
Improvements are the following:
- Unity of class: the application form guides the user to ensure no more than one Locarno class is submitted, which helps avoid deficiencies.
- Indication of deferment: the choice regarding deferment is more explicit and visible on the interface.
- Priorities: it is now possible to copy priority details from design to design in a multiple application.
- Related checks with applicant and representative: new rules are in place to validate the information entered, thus avoiding deficiencies.
- Non-protected views: it is now easier to indicate non-protected views; the user only needs to upload one protected view.
- Preview of the views: what you see is what you get; that is, the preview of views displayed on the RCD eFiling confirmation screen is the same as that seen in eSearch and eRegister (and Publication).
- Confirmation screen: for a smoother processing of the application, there is additional information on the confirmation screen to make the user aware of possible errors before submitting the application.
The improved design application form can be accessed hereSource: www.euipo.europa.eu Jun 03, 2021 (Newsletter Issue 11/21)IP Office Replaces Attachments with Links in CommunicationsOn May 15, 2021, the EUIPO launched a 6-month pilot to replace attachments with links in official outgoing communications. Besides the environmental benefits, the primary aim of the pilot is to reduce the risk of delivery failure and free up space on the hard drive. In addition, EUIPO hopes that more customers will opt for electronic communication by setting up an eComm account in the Use Area via the EUIPO website.
Official communication was sent by post to those customers who do not have a User Area account via the EUIPO Website. During the 6-month pilot, postal communications will continue but will include a page with information on setting up an eComm account in the User Area and how to open links.
For more information, please check hereSource: www.euipo.europa.eu May 06, 2021 (Newsletter Issue 9/21)
Collaboration to Support SMEs
On March 29, 2021, the EUIPO signed a collaboration agreement with EUROCHAMBRES, the Association of European Chambers of Commerce and Industry, representing over 20 million companies through 45 national and transnational members and a European network of 1,700 regional and local chambers of commerce.
The chambers of commerce assist the EUIPO to raise awareness on the importance of IP to drive business growth. This agreement covers activities such as collaboration in webinars, events, studies, and other joint initiatives directly impacting EU SMEs.
Source: www.euipo.europa.eu
May 06, 2021 (Newsletter Issue 9/21)Financial Support for SMEs Since May 1, 2021, small and medium-sized enterprises (SMEs) based in the EU can apply for financing under the new Ideas Powered for Business SME Fund.
Open to all enterprises in the EU that fit the official definition of a SME, the new scheme offers financial support in the form of reimbursements for trademark and design application and for IP pre-diagnostic services (IP Scan), up to a maximum amount of EUR 1,500 per business.
The new application window is open from 1 to 31 May, which is the third of five application windows running throughout 2021.
Requirements, timing and other information relevant to the scheme can be seen through the Ideas Powered for Business hub hereSource: www.euipo.europa.eu May 06, 2021 (Newsletter Issue 9/21)Official eRegister Online On March 31, 2021, the first official eRegister was launched following Decision No EX 21 4 of the Executive Director of the Office of March 30, 2021.
The eRegister allows access to historical records of EU trademarks and registered Community designs. The tool improves the traceability of IP rights by providing changes they have undergone, such as the creation, modification, and expiry of licenses and transfers of ownership.
The eRegister can be accessed via the EUIPO's search tool eSearch plus by clicking on the eRegister button (top right of your screen) after searching for a specific trademark or design.
The record of any given IP right can be downloaded free of charge as a certified copy. Records downloaded from eRegister are deemed to be authentic extracts from the EUTM and RCD registers and can be verified online hereSource: www.euipo.europa.eu Apr 22, 2021 (Newsletter Issue 8/21)Common Communication on New Types of MarksOn April 14, 2021, the EUIPO informs that the CP11 Common Communication on ‘New types of marks: Examination of formal requirements and grounds for refusal’ has been published across the EU on the websites of the EU IP Offices.
The CP11 Common Practice was adopted by the Management Board by written procedure in October 2020. It delivers a set of general principles and examples on the examination of formal requirements and grounds for refusal and/or invalidity regarding sound, motion, multimedia and hologram marks and the new ways of representing them. It also informs about the implementation dates for each participating EU IP Office and the proceedings on which it will be implemented.
The Common Communication document is available in all EU languages hereSource: www.euipo.europa.eu Apr 08, 2021 (Newsletter Issue 7/21)Common Practice on Evidence in TM Appeal ProceedingsOn March 31, 2021, the EUIPO informs that the CP12 Common Practice/Recommendations on Evidence in trade mark appeal proceedings has now been published across the EU on the websites of the EU IP Offices.
CP12 is the first convergence initiative in the area of trademark appeal proceedings and focuses on delivering a set of recommendations in relation to evidence.
The CP12 Common Practice focuses on the following:
- types of evidence and their admissibility at the stage of appeal proceedings;
- means and sources of evidence, including its genuineness, veracity and reliability;
- establishing the relevant date of evidence;
- ways to present evidence: structure and presentation, including acceptable formats, size and volume, index of annexes and templates;
- confidentiality of evidence.
The Common Communication document is available in all EU languages hereSource: www.euipo.europa.eu Mar 25, 2021 (Newsletter Issue 6/21)EU and Chinese Geographical Indications Protectable NowOn March 1, 2021, the EU-China bilateral agreement on protecting geographical indications (GIs) in China and Europe entered into force. The agreement protects around 200 iconic European and Chinese agri-food names against imitation and usurpation, bringing mutual trade benefits and introducing consumers to guaranteed, authentic products from two regions with a rich culinary and cultural tradition.
The EU list of GIs to be protected in China includes iconic GI products such as Cava, Champagne, Feta, Irish Whiskey, Münchener Bier, Ouzo, Polska Wódka, Porto, Prosciutto di Parma and Queso Manchego.
Among the Chinese GI products, the list includes for example Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).
In the course of the next four years, the agreement will expand to cover an additional 350 GI names from both sides. These names will have to follow the same approval procedure as the names already covered by the agreement (i.e. assessment and publication for comments).
For more information, please click here Source: www.ec.europa.eu Mar 11, 2021 (Newsletter Issue 5/21)New Examination Guidelines in Force On March 1, 2021, the latest edition of the Guidelines for Examination of European Union trademarks and registered Community designs entered into force, following the approval by the Executive Director of the EUIPO on 8 February 2021 by means of Decision EX-21-1.
The Guidelines are available in both electronic and PDF format on the EUIPO website here. The modifications introduced in the new edition can be seen and compared to the previous edition by switching on the ‘Show modifications’ option at the top part of the electronic version of the Guidelines.
Currently, the latest edition of the Guidelines is available in English, French, German, Italian and Spanish. Nevertheless, the Guidelines will be made available in the other 18 official languages of the EU during the course of 2021.Source: www.euipo.europa.eu Mar 11, 2021 (Newsletter Issue 5/21)Short Window for Financial Support for SMEs OpenAs of March 1, 2021, small and medium-sized enterprises (SMEs) based in the EU can apply for financing under the new Ideas Powered for Business SME Fund.
Open to all enterprises in the EU that fit the official definition of a SME, the new scheme offers financial support in the form of reimbursements for trademark and design application and for IP pre-diagnostic services (IP Scan), up to a maximum amount of EUR 1,500 per business.
The new application window is open from 1 to 31 March, which is the second of five application windows running throughout 2021.
Requirements, timing and other information relevant to the scheme can be seen through the Ideas Powered for Business hub hereSource: www.euipo.europa.eu Mar 11, 2021 (Newsletter Issue 5/21)E-Communication PreferredEUIPO informs its users pursuant to Decision No EX 20 9 that e-communications (eComm) will be the way to communicate with the Office in procedures of European Union trademarks (EUTM) and registered Community designs (RCD) from March 1, 2021.
All EUIPO users who previously selected ‘Fax or Post’ as communication mode with the Office, will now receive e-communications, which are faster than postal mail and safer than fax, in all matters related to EUTMs and RCDs.
For more information and practise tips can be seen hereSource: www.euipo.europa.eu Feb 11, 2021 (Newsletter Issue 3/21)
Visual Search for TMview Extended to Denmark
As of December 18, 2020, the Danish Patent and Trademark Office (DKPTO) has made its trade mark images available to TMview visual search tool.
Source: www.euipo.europa.eu
Feb 11, 2021 (Newsletter Issue 3/21)
First Bulgarian Authenticities Certified in European Cooperation Project
On November 18, 2020 and December 22, 2020, the municipalities of Sofia and Plovdiv became the first certified Bulgarian ‘Authenticities’ under the framework of the European Cooperation Project (ECP8) ‘European Network of Authenticities’.
Following a Memorandum of Understanding signed between the Patent Office of the Republic of Bulgaria and both municipalities, and in cooperation with different stakeholders, a series of IP-related awareness-raising activities will take place locally over the next two years in the newly certified Authenticities.
This European Cooperation Project aims to raise awareness, among local policymakers, businesses and the European public, of both the value of IP and the damaging effects of counterfeiting in European cities.
Source: www.euipo.europa.eu
Jan 28, 2021 (Newsletter Issue 2/21)Technical Requirements for Annexes on Data Carriers to ChangeEUIPO informs on the new decision of the Executive Director on the technical requirements for annexes submitted on data carriers No EX-20-10, repeals previous Decision EX-17-6 which was signed on December 22, 2020. The new Decision will enter into force on March 1, 2021.
The new decision will bring in the following main changes:
- Removal of CDs and DVDs: CDs and DVDs will no longer be considered as an acceptable ‘format’ of data carrier, however USB flash drives, pen drives or similar USB type memory units will continue to be allowed.
- Reducing the size of individual files: the acceptable file size of an individual annex as submitted on a data carrier will be reduced to 20MB, to be aligned with the sizes of files accepted in all online eActions (through the UserArea)
By implementing the above changes, the annexes submitted on data carriers will be able to be incorporated automatically into the content of the electronic file of the IP right or proceeding in question, and therefore also available for free online inspection of files to all parties. This change is also aimed at preventing loss or corruption of data saved on disks as they are more susceptible to damage over time.
The decision also includes information on file(s) format, structure and name, as well as the processing of illegible annexes. To access the decision, please click hereSource: www.euipo.europa.eu Jan 28, 2021 (Newsletter Issue 2/21)New E-filing Forms for TrademarksOn January 18, 2021, the EUIPO launched its new e-filing form designed for direct filers which are usually small businesses and individual entrepreneurs from the European Economic Area.
The Office informs that the EasyFiling tool is a new, mobile-friendly application combining artificial intelligence and the latest technologies to simplify e-filing for direct filers. First-time applicants, with little or no knowledge of the EU trademark application process, will be guided in a way that should prevent mistakes and avoid delays in the registration of their trademark. An interactive virtual assistant will facilitate, among other things, the selection of pre-approved terms of goods and services and help inexpert filers understand the risks of conflict with similar, pre-registered trademarks.
The new EasyFiling tool can be accessed hereSource: www.euipo.europa.eu Jan 14, 2021 (Newsletter Issue 1/21)
Visual Search for TMview Extended to Germany
As of November 30, 2020, the DPMA has made its trademark images available via the TMview visual search tool.
Source: www.euipo.europa.eu
Jan 14, 2021 (Newsletter Issue 1/21)
CP11 and CP12 Common Practices Adopted
EUIPO informs that the CP11 Common Practice and CP12 Common Practice were adopted by the Management Board through a written procedure in November 2020, following acknowledgement at the Liaison Meeting on Trade Marks in October.
The CP11 Common Practice establishes general principles on the examination of formal requirements and grounds for refusal and/or invalidity of new types of trademark, namely sound, motion, multimedia and hologram marks, and the new ways of representing them.
The CP12 Common Practice provides recommendations regarding evidence in trademark appeal proceedings, in particular, its types, means, sources and identification of relevant dates, as well as its structure and presentation, and the treatment of confidential evidence.
The Common Practices will be implemented by IP Offices in Spring 2021 and made available through the publication of the corresponding Common Communications.
Source: www.euipo.europa.eu
Jan 14, 2021 (Newsletter Issue 1/21)EU Customs Enforcement Post-BrexitThe European Commission informs on its website that the transition period for the United Kingdom’s withdrawal from the EU ended on 31 December 2020. This means that the UK is now formally a third country and EU law no longer applies there.
For the purposes of customs, the UK is treated as any other non-EU country as of 1 January 2021. In particular, customs procedures and formalities now apply to trade between the UK and the EU.
However, in accordance with the agreed Protocol on Ireland and Northern Ireland, EU customs rules and procedures generally continue to apply to goods entering and leaving Northern Ireland.
With regard to the enforcement of IP rights by EU Customs, the following will apply to Applications for Action (AFA) from 1 January 2021:
- Existing EU-wide AFAs filed via an EU27 Customs office will remain valid and enforceable in the EU27 but will cease to have effect in the UK.
- Existing EU-wide AFAs filed via the UK Customs authority will remain valid and enforceable in the UK but will cease to have effect in the EU27.
- Any new EU-wide AFA filed via an EU27 Customs office will apply across EU27 only and will not be enforceable in the UK. To obtain protection in the UK, the UK national system must be followed.
More information can be accessed here and hereSource: www.ec.europa.eu; www.twobirds.com Dec 03, 2020 (Newsletter Issue 20/20)Action Plan on IP Published by European CommissionOn November 25, 2020, the European Commission published its new Action Plan on Intellectual Property, which sets out five key areas for development over the coming years.
The Action Plan aims
- to improve the protection of IP;
- to boost the uptake of IP by SMEs;
- to facilitate the sharing of IP to increase the technological uptake in the industry;
- to fight counterfeiting and improve the enforcement of IP rights
- and to promote a global level playing field.
Among the initiatives planned are modernising EU design protection and strengthening the protection of agricultural geographical indications (GIs) while considering the feasibility of a GI protection system for non-agricultural products at EU level. Further, actions are included to help SMEs leverage their IP portfolios.
The Action Plan can be seen hereSource: www.euipo.europa.eu; www.ec.europa.eu Dec 03, 2020 (Newsletter Issue 20/20)Launch of New Search Database GIview On November 25, 2020, EUIPO announces the launch of GIview, a new search database for all geographical indications (GIs) protected at European Union level.
GIview provides a single entry point for data on GIs registered in the EU. It also contains detailed information on non-EU GIs protected at EU level through bilateral and multilateral agreements, and on EU GIs protected in non-EU countries.
GIview contains data such as GI type (PDO, PGI, GI), priority date, legal status, basis of protection in relation to all GIs covering wines, spirit drinks and aromatised wines, agricultural products and foodstuffs protected at EU level.
A special feature of GIview is that it is made open to national authorities and to producer groups to upload extended data, such as the contact data of the GI producer groups and control bodies, maps, photographs of the product, product description, the geographical area, sustainability statements, and other information.
The database is continually updated with official registered data from the European Commission (Directorate-General for Agriculture and Rural Development) and is developed and maintained by the EUIPO.
The GIview database can be accessed here
For more information, please click hereSource: www.euipo.europa.eu Nov 19, 2020 (Newsletter Issue 19/20)
DESIGNclass Joined by Monaco and San Marino
As November 9, 2020, the Industrial Property Office of the Business Development Agency of the Principality of Monaco (MCIPO) and the Patents and Trademarks Office of the Republic of San Marino (USBM) are part of DESIGNclass. From this day, MCIPO and USBM will use and accept the list of terms from the harmonised database of product indications (HDBPI) in DESIGNclass.
Source: www.euipo.europa.eu
Nov 19, 2020 (Newsletter Issue 19/20)Fax Services to Be Discontinued As of March 1, 2021, the EUIPO will discontinue its fax services by Decision of the Executive Director No EX 20 9. The decision has been driven by the fact that fax is no longer reliable from a technical point of view.
EUIPO informs on fax alternatives, such as an “e-Reply button” available in all e-communications sent by the Office where a reply is permitted. In addition, the EUIPO is working on a file-sharing option as a fall-back solution in case of a lack of connection with the Office systems.
Technical details on these back-up solutions (fax alternative and file-sharing) will be available in the ‘conditions of use’ of each option. Postal mail will continue to be an accepted means of communication with the Office. More Information can also be seen hereSource: euipo.europa.eu Nov 05, 2020 (Newsletter Issue 18/20)Guidelines for Examination Available in 23 Official LanguagesOn October 19, 2020, EUIPO informs that the Guidelines for the Examination of EU Trademarks and Registered Community Designs at the EUIPO (Decision No EX-19-4) are now available in 23 official languages.
The guidelines were adopted by the Executive Director on 12 December 2019 and have been in force since 1 February 2020. They were previously only available in the five working languages of the EUIPO namely in English, French, German, Italian and Spanish. Now the following languages have now been added: Bulgarian, Croatian, Czech, Danish, Dutch, Estonian, Finnish, Greek, Hungarian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovene and Swedish.
The ‘compare’ functionality, which can be activated by switching on ‘Show modifications’ in the top left-hand corner of the web page, is now also available in 23 official EU languages. This enables the user to quickly view any changes compared to previous editions.
For more Information, please click hereSource: www.euipo.europa.eu Oct 22, 2020 (Newsletter Issue 17/20)Agreement Protecting EU / Chinese Geographical IndicationsOn September 14, 2020, the EU and China signed a bilateral agreement to protect 100 European Geographical Indications (GIs) in China and 100 Chinese GIs in the European Union against usurpation and imitation. This agreement, first concluded in November 2019, should bring reciprocal trade benefits as well as introducing consumers to guaranteed, quality products on both sides.
For more information, please click hereSource: www.ec.europa.eu Oct 22, 2020 (Newsletter Issue 17/20)New Quality Initiative for Absolute Grounds On October 1, 2020, EUIPO has launched the ‘AG2Review’ initiative to enhance quality and consistency in absolute grounds examination. This is in accordance with Decision No EX-20-06.
AG2Review is a peer-to-peer review of the Office’s AG objection letters before their notification to the trademark applicant. Letters that have been peer reviewed are easily identifiable by the presence of the AG2Review stamp and the reviewer’s name. However, the responsibility for objecting to a trademark remains exclusively with the examiner signing the objection letter.
For more information, please click hereSource: www.euipo.europa.eu Oct 22, 2020 (Newsletter Issue 17/20)Common Practice on Use of Trademarks in a Form Differing from the One RegisteredOn October 15, 2020, EUIPO published the Common Communication document which included the CP8 Common Practice.
The Common Practice document delivers a set of principles and examples on the use of a trademark in a form differing from the one registered by taking into account the impact of additions, omissions, and modifications of characteristics on the distinctive character of registered word marks, purely figurative marks and composite marks (combination of verbal and figurative elements). It serves as a reference for EUIPO and Intellectual Property Offices of Member States.
The Common Communication can be seen here. It is available in all EU languages.
For more Information, please check also hereSource: www.euipo.europa.eu Oct 08, 2020 (Newsletter Issue 16/20)IP Cooperation Plan in Africa by AfrIPI EndorsedOn September 7, 2020, AfrIPI held its inaugural Project Steering Committee (PSC) meeting.
The African Regional Intellectual Property Organization (ARIPO), the Organisation Africaine de la Propriété Intellectuelle (OAPI), the African Union Commission (AUC), the European Commission and the EUIPO discussed and approved the AfrIPI overall plan and future activities for next years in Africa.
Among other activities, AfrIPI will:
- support the registration of geographical indications (GIs) in Africa and the EU,
- develop IP guidelines for OAPI and ARIPO member states, and
- train IP examiners on international frameworks (such as The Hague Agreement).
AfrIPI, funded by the European Commission and EUIPO, and managed by EUIPO, aims to strengthen national and regional IP institutions and enforcement systems, while promoting IP benefits to businesses and other economic actors. AfrIPI became fully operational in February 2020. For four years, it will support the African Continental Free Trade Area (AfCFTA) and boost continental economic integration.
For more information, please click here. To learn more about AfrIPI, please check here. Source: www.euipo.europa.eu Oct 08, 2020 (Newsletter Issue 16/20)
Uganda Joined TMclass and DesignClass
As of August 3, 2020, the Uganda Registration Services Bureau (URSB) became part of TMclass and DesignClass. URSB will now use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass as well as the list of terms from the harmonised database of product indications (HDBPI) in DesignClass.
Source: www.euipo.europa.eu
Sep 24, 2020 (Newsletter Issue 15/20)
OAPI Enhanced Participation in TMclass / Joining DesignClass
As of September 14, 2020, the African Intellectual Property Organization (OAPI) has enhanced its participation in TMclass and joined DesignClass.
OAPI will now use and accept the list of terms from the harmonised database of goods and services (HDB) in TMclass as well as the list of terms from the harmonised database of product indications (HDBPI) in DesignClass.
Source: www.euipo.europa.eu
Sep 24, 2020 (Newsletter Issue 15/20)Impact of UK’s Withdrawal from the EUEUIPO informs on how the Office intends to handle the circumstances that the EUTM and RCD Regulations will cease to apply to the UK after the transition period as from January 1, 2021. EUIPO intends to give further practical guidance on the way in which the Office will apply the relevant provisions of EU legislation as from January 1, 2021.
The updated version of information supersedes all previous information on the impact of the UK’s withdrawal from the EU as regards EUTMs and RCDs published on this Website and contains the following documents:
11 September, 2020
Communication No 2/2020 of the Executive Director of the Office of 10 September 2020 on the impact of United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office
11 September, 2020
Impact of the United Kingdom's withdrawal from the European Union on the European Union trademark and the Community design of 10 September 2020 (Q & A document)
18 June, 2020
Notice to stakeholders (updated 18-06-2020)
Further, EUIPO points out that special attention should be paid to the information on representatives after the transition period.
For more information, please click hereSource: www.euipo.europa.eu Sep 24, 2020 (Newsletter Issue 15/20)Operations as Accessing Office of WIPO DAS CommencedOn July 28, 2020, the European Union Intellectual Property Office (EUIPO) notified the International Bureau that it would commence operation as an accessing office with effect from September 12, 2020.
As an Accessing Office, the technical and operational options adopted by the EUIPO are:
- recognize priority documents available to it through the service for the purposes of any application for which the WIPO DAS code has been supplied at the time of filing.
- accept color, grayscale black and white documents in PDF or JPEG format as deposited by the Depositing Office.
For more information, please click hereSource: www.wipo.int Sep 24, 2020 (Newsletter Issue 15/20)EORI Number for EU Customs Application Required NowThe European Commission informs via the Official Journal of the European Union that the
Commission Implementing Regulation (EU) 2020/1209 of 13 August 2020 amends the Implementing Regulation (EU) No 1352/2013 establishing the forms provided for in Regulation (EU) No 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights. The Regulation went into force on September 15, 2020.
All right holders and their representatives are now required to include an EORI number (Economic Operators Registration and Identification number) when electronically submitting an application requesting that customs authorities take action with respect to goods suspected of infringing an IP right and to submit a request for extension of the period during which the customs authorities are to take action.
The EORI number is a unique identification number of applicants and their representatives.
For more information, please click hereSource: www.eur-lex.europa.eu Aug 06, 2020 (Newsletter Issue 13/20)
Several Countries Join DesignClass /TMclass
As of July 13, 2020, the Ministry of Economy of Montenegro is part of DesignClass and will use and accept the list of terms from the harmonised database of product indications (HDBPI) in DesignClass.
Further, as of July 27, 2020, the National Industrial Property Office of the Dominican Republic (ONAPI) and the Intellectual Property Office of Saint Kitts and Nevis (IPOSKN) are part of TMclass.
Source: www.euipo.europa.eu
Aug 01, 2020
First Greek Authenticity Certified in European Cooperation Project
On July 30, 2020, the Municipality of Thessaloniki (Greece) became the first certified ‘Authenticity’ under the framework of the European Cooperation Project (ECP8) ‘European Network of Authenticities’.
Following a Memorandum of Understanding signed between the Hellenic Industrial Property Organisation (OBI) and the Municipality of Thessaloniki, in cooperation with the Metropolitan Area of Thessaloniki, the Chamber of Tradesmen, the Economic chamber of Thessaloniki and the Chamber of Small and Medium-Sized Enterprises of Thessaloniki, a series of IP-related awareness-raising activities will take place locally over the next two years in the newly certified Authenticity.
This European Cooperation Project aims to raise awareness of both the value of IP, and the damage caused by counterfeiting in European cities among local policymakers, businesses and, ultimately, the European public.
Source: www.euipo.europa.eu
Jul 09, 2020 (Newsletter Issue 11/20)Overview of CJ and GC Case-LawEUIPO informs that the Litigation Service of the Office has prepared an Overview of the Court of Justice (CJ) and the General Court (GC) Case-law.
The overview contains a systematic compilation of key points of judgments and orders rendered by the Court of Justice and the General Court of the European Union on actions against decisions of the EUIPO’s Boards of Appeal and in preliminary rulings on IP rights between January 1, 2019 and April 30, 2020.
Hyperlinks in the case reference lead to the Office’s eSearch Case Law database giving the user easy access to the full text of the judgment or order. Further, the compilation is constantly updated by EUIPO.Source: www.euipo.europa.eu Jul 09, 2020 (Newsletter Issue 11/20)
New Zealand Joined DesignView
On June 29, 2020, the Intellectual Property Office of New Zealand (IPONZ) has made its design data available to the DesignView search tool.
Source: www.euipo.europa.eu
Jul 09, 2020 (Newsletter Issue 11/20)Becoming Depositing Office for WIPO DASEUIPO notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions for the Digital Access Service for Priority Documents (DAS) that it would commence operation as a depositing office with effect from July 11, 2020.
EUIPO as a depositing Office will deposit certified copies of Industrial Design applications as priority documents, filed at the EUIPO from July 11, 2020 onwards, which the applicant specifically requests be made available to the service.
All documents and information will be exchanged in black and white or color and in PDF format through the WIPO DAS Office web portal and based on WIPO DAS.
More information can be seen hereSource: www.wipo.int Jun 25, 2020 (Newsletter Issue 10/20)Closer Collaboration with Domain Name RegistryEUIPO and EURid are set to intensify collaboration to support trademark and domain name applicants and owners, particularly small and medium enterprises (SMEs). EURid is responsible for domain name registry for the .eu, .ею and .ευ top-level domains.
At present, EU trademark applicants are advised whether their trademark is available as a .eu domain name at the end of the online application process at EUIPO. Applicants and holders can also set up alerts to be informed once a .eu domain name that matches their trademark is registered.
Under a new work programme the EUIPO and EURid will explore the possibility of implementing a reciprocal process when a .eu domain name is registered, allowing holders to see if a trademark with a similar name is available at the EUIPO.
Additionally, both organisations will work on a common study on application behaviour, to see whether trademarks or domain names are registered first. The study will assist in tackling fraudulent domain names and registrations done in bad faith.
For more information, please click hereSource: www.euipo.europa.eu Jun 11, 2020 (Newsletter Issue 9/20)Comments on Convergence Projects CP11 and CP12 WelcomedThe EUIPO welcomes comments on the final drafts of the below Common Practices:
- CP11: New types of marks: Examination of formal requirements and grounds for refusal and invalidity
- CP12 : Evidence in Trade Mark Appeal Proceedings
The drafts have been made available in English on www.euipn.org for a final review by all stakeholders before being presented to the Extended Working Group of each project in September 2020.
Comments need to be addressed to CommonPractices@euipo.europa.eu by July 6, 2020 through special forms.
More information can be seen hereSource: www.euipo.europa.eu Jun 11, 2020 (Newsletter Issue 9/20)All Communications with EUIPO ElectronicallyEUIPO informs that the Office has accelerated work on e-communications so that all communications sent to the Office can be now carried out online.
The Reply button is now available for all e-communications where a reply is permitted. Furthermore, a ‘fax alternative’ option has been added as an additional fall-back solution. The screenshot below shows how both these options appear.
More information can be seen hereSource: www.euipo.europa.eu May 28, 2020 (Newsletter Issue 8/20)End of Extension PeriodEUIPO informs that with the ending of the exceptional extensions granted to users by two decisions of the Executive Director of the EUIPO (Decision No EX-20-3 and Decision No EX-20-4), the number of publications in the Bulletin are set to increase over the coming weeks.
European Trademarks which were not subject to an opposition during the extension period will be reflected in a more extensive Bulletin than usual.
In addition, approximately 1,000 letters were sent to users who have not signed up to receive electronic communications (eComm) through the User Area, through ordinary post (without attachments) and via courier (with Decisions).
Those users who have already signed up for eComm have been receiving communications from the Office as normal during this time.
For more information, please click hereSource: www.euipo.europa.eu Apr 30, 2020 (Newsletter Issue 6/20)New Functionalities of EUIPO Guidelines ExtendedEUIPO informs that the EUIPO Guidelines for Examination of EUTMs and RCDshere in electronic format have been enhanced with new functionalities.
Among the improvements, an advanced search function and the possibility to download a PDF on Part and Section level have been made available.
An advanced search function has been made available to allow users to better define searches. It is now possible to search in the entire Trade Mark or Design Guidelines publication, in a specific Part, or in a specific Section. The term searched for (or its linguistic variant) is now highlighted in the list of search results.
Part and Section-level PDFs have also been made available to download from the Guidelines. The type of PDF that will open depends on and recognises the following:
a) in which publication (Trade Mark Guidelines or Design Guidelines) you are browsing;
b) in which edition you are browsing (2017, 2020);
c) where in the Guidelines you have navigated to (which Part or Section);
d) in which language you are browsing, and
e) whether you have ‘Show modifications’ turned on or off; either a ‘clean’ version or a version with tracked changes will open.
More detailed information is available via the updated tutorial hereSource: www.euipo.europa.eu Apr 30, 2020 (Newsletter Issue 6/20)Common Communications on Distinctiveness of 3-D Marks / Designs on InternetOn April 1, 2020, the EUIPO has published the CP9 Common Practice ‘Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself’ and the CP10 Common Practice ‘Criteria for assessing disclosure of designs on the internet’.
- CP9 Common Practice: Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself here
- CP10 Common Practice: Criteria for assessing disclosure of designs on the Internet here
These communications inform users about the application of the principles of each Common Practice by the IP offices of the European Union. They also make publicly available the official Common Practice documents as adopted by the EUIPO Management Board in November 2019, following acknowledgement at the Liaison Meeting on Trade Marks and Designs on 22-24 October 2019.
The scope of the CP9 Common Practice is the assessment of the overall inherent distinctiveness of shape marks consisting of a non-distinctive shape of the goods themselves, packaging or containers, and other elements to which the shape mark extends, within absolute grounds examination.
The CP10 Common Practice provides criteria for assessing disclosure of designs on the internet and recommendations on sources of design disclosure on the internet, types of evidence used for proving disclosure on the internet, different means for establishing the date of disclosure and, lastly, the exceptions to the availability of designs on the internet.Source: www.euipo.europa.eu Apr 30, 2020 (Newsletter Issue 6/20)
Countries Join TMview / DesignClass
As of April 6, 2020, IP Australia has made its trade mark data available to the TMview search tool.
As of March 30, 2020, the Finnish Patent and Registration Office (PRH) is part of the Common Harmonised Database on Product Indications (HDBPI) in DesignClass.
Source: www.euipo.europa.eu
Apr 30, 2020 (Newsletter Issue 6/20)Electronic Register on EUTMs and RCDs LaunchedOn April 20, 2020, EUIPO informs that an electronic register “eRegister” for accessing historical information on European Union trademarks (EUTMs) and registered Community designs (RCDs) has been launched in beta version.
With the future eRegister EUIPO offers an official record of every entry made in the Register in relation to an EUTM or RCD application or registration. The records are presented in chronological order and serve for historical reference purposes.
This new tool is expected to increase the traceability of a given IP right’s history, allowing users to easily ascertain what information was changed, when it was changed and why it was changed. However, the eRegister beta version should only be used for testing purposes so far.
For more information, please click hereSource: www.euipo.europa.eu Apr 02, 2020 (Newsletter Issue 5/20)
Countries Join TMview / TMclass / DesignClass
On March 23, 2020, the Polish Patent Office made its trade mark images available to the visual search tool in TMview on March 23, 2020.
As of March 16, 2020, Panama became part of the TMclass and DesignClass tools.
Source: www.euipo.europa.eu
Mar 19, 2020 (Newsletter Issue 4/20)Extension of Time Limits A decision of the Executive Director has been published extending all time limits to May 1, 2020. In practice, this means that time limits are extended until Monday 4 May, given that Friday 1 May is a public holiday.
EUIPO’s Information Centre and Second Line will continue to operate as normal to receive queries by phone or email.
The Office’s headquarters will remain closed until further notice; no visitors will be admitted and all events scheduled at the Office during this period are postponed.
For more information, please click hereSource: www.euipo.europa.eu Feb 20, 2020 (Newsletter Issue 2/20)
Further Countries Joined TM View
As of 17 February 2020, IPONZ has made its trademark data available to the TMview search tool.
On 5 February 2020, the Benelux Office of Intellectual Property (BOIP) made its trademark images available to the visual search tool in TMview.
Source: www.euipo.europa.eu
Feb 20, 2020 (Newsletter Issue 2/20)New Examination Guidelines in ForceEUIPO informs that the newest edition of the Guidelines for Examination of EUTMs and RCDs entered into force on 1 February 2020 following their adoption by the Executive Director of the Office on 12 December 2019. The Guidelines are available in both HTML and PDF format here
More information on the substantial changes that have been made can be found in the webinar here and a tutorial on the main features and functionalities is available hereSource: euipo.europa.eu Feb 06, 2020 (Newsletter Issue 1/20)Impact of UK’s WithdrawalIn accordance with the Withdrawal Agreement concluded between the European Union (EU) and the United Kingdom (UK), the UK left the EU on February 1, 2020.
The Withdrawal Agreement stipulates that during a transition period that will last until December 31, 2020, EU law remains applicable to and in the UK. This extends to the EU Trade Marks (EUTM) and Registered Community Designs (RCD) Regulations and their implementing instruments.
This continued application of the EUTM Regulations and the RCD Regulations during the transition period includes, in particular, all substantive and procedural provisions as well as the rules concerning representation in proceedings before the EUIPO.
In consequence, all proceedings before the Office that involve grounds of refusal pertaining to the territory of the UK, earlier rights originating from the UK, or parties/representatives domiciled in the UK will run as they did previously, until the end of the transition period.
For more Information, please check hereSource: www.euipo.europa.eu Dec 05, 2019 (Newsletter Issue 17/19)
Increased Collaborations with Europol
The EU’s Agency for Law Enforcement Cooperation Europol and the European Union Intellectual Property Office (EUIPO) have formally signed an agreement to further increase cooperation in fighting infringements of intellectual property rights.
Both have been collaborating since 2013 on a range of different topics. Since 2016, the Intellectual Property Crime Coordinated Coalition (IPC3) exists as a specialist unit within Europol but is funded by the EUIPO.
The unit has coordinated and supported cross-border operations aimed at tackling IP crime across the EU in all relevant sectors such as pharmaceuticals, food and drinks, pesticides, counterfeit luxury goods, clothing, electronics, car parts, toys and illegal streaming. In total, counterfeit goods valued over EUR 980 million have been seized.
Source: www.iprhelpdesk.eu
Nov 19, 2019 (Newsletter Issue 16/19)
Latest Additions to TMview, TMclass and DesignClass
As of October 1, 2019, the African Intellectual Property Organization (AIPO) has made its trade mark data available to the TMview search tool.
As of October 21, 2019, the Bureau of Intellectual Property within the Office of Economic Affairs of the Principality of Liechtenstein has made its trade mark data available to the TMview search tool.
As of November 4, 2019, the National Institute of Industrial Property of Argentina joined TMclass, and will use and accept the list of terms from the harmonised database within the tool.
In addition, the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru has joined DesignClass and will use and accept the list of terms from the harmonised database of product indications.
Source: www.euipo.europa.eu
Oct 10, 2019 (Newsletter Issue 14/19)
Latest Additions to TMclass and TMview
As of September 9, 2019, the Intellectual Property Office of New Zealand has joined TMclass.
As of September 27, 2019, the Department of Intellectual Property under the of Ministry of Commerce in Thailand has made its trademark data available to the TMview search tool.
Source: www.tmdn.org
Aug 22, 2019 (Newsletter Issue 11/19)
Chile Joined DesignView
As of July 22, 2019, the National Institute of Industrial
Property Office of Chile (INAPI) has made its design
data available to the DesignView search tool.
Source: www.euipo.europa.eu
Aug 22, 2019 (Newsletter Issue 11/19)
Monaco Uses List of Terms from Harmonised Database in TMclass
As of July 15, 2019, the Industrial Property Office of the Business Development Agency of the Principality of Monaco (MCIPO) will use the list of goods and services from the harmonised database (HDB) in TMclass in French.
Source: www.euipo.europa.eu
Jul 11, 2019 (Newsletter Issue 9/19)
Visual Search Extended to Croatia
The intellectual property office of Croatia has enabled the functionality of TMview’s visual search facility with their trade mark database on 22 June.
The extension to this Office in TMView's visual search allows for the image search function to be used on device marks from 15 countries (Estonia, Bulgaria, France, Greece, Lithuania, Romania, Spain, UK; Malta, Sweden, Italy, Ireland, Slovakia, Czech Republic and Croatia).
Source: www.ec.europa.eu
Jun 20, 2019 (Newsletter Issue 8/19)New IP Enforcement Portal by EUIPO LaunchedEUIPO launches its new IP Enforcement Portal that intends to be a bridge for secured communications between rights holders, EU enforcement authorities and the EU Commission, as well as other delegations located outside the EU.
The platform permits all rights holders, enforcers and the EU Commission and its EU delegations to enter information related to IPR enforcement through drop-down menus in their own language.
The Portal can be accessed and registered hereSource: www.euipo.europa.eu Jun 20, 2019 (Newsletter Issue 8/19)Draft Common Practice of CP8 Project PublishedEUIPO informs that the Draft Common Practice of the CP8 Project USE OF A TRADE MARK IN A FORM DIFFERING FROM THE ONE REGISTERED has been published. This Common Practice document aims to identify general principles for assessing when the use of a trademark in a form differing from the one registered alters its distinctive character and to provide with guidance in this respect.
It serves as a reference for the EUIPO, Benelux, and Intellectual Property Offices of Member States, User Associations, parties and representatives on the CP8 Common Practice.
The second draft of the Common Practice has been made available by the CP8 Working Group for review and suggestions by all stakeholders.
EUIPO welcomes comments, which should be addressed to CommonPractices@euipo.europa.eu by July 17, 2019.Source: www.euipo.europa.eu Jun 20, 2019 (Newsletter Issue 8/19)
Several Countries Joined TMview/DesignView
The Department of Intellectual Property (DIP) of Lao People's Democratic Republic has made its trade mark and design data available to the TMview and DesignView search tools.
The Cambodian Ministry of Industry and Handicraft (MIH) has made its design data available to the DesignView search tool.
Source: www.euipo.europa.eu
Jun 20, 2019 (Newsletter Issue 8/19)
Visual Search for TMview Extended to Czech Republic
The intellectual property office of Czech Republic has enabled the functionality of TMview’s visual search facility with its trade mark database. This allows for the image search function to be used on trade marks from this country that have an image.
Source: www.euipo.europa.eu
Apr 04, 2019 (Newsletter Issue 5/19)IP Office Will Not Accept Merger Request of Intl. RegistrationThe European Union has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the European Union has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Jan 31, 2019 (Newsletter Issue 1/19)
Monaco Joined TMview
As of January 28, 2019, the Industrial Property Office of the Business Development Agency (MCIPO) has made its trade mark data available to the TMview search tools.
Source: www.oami.europa.eu
Jan 31, 2019 (Newsletter Issue 1/19)
Brunei Darussalam Joined TMview and DesignView
As of January 23, 2019, the Brunei Intellectual Property Office (BruIPO) has made its trade mark and design data available to the TMview and DesignView search tools.
Source: www.oami.europa.eu
Dec 13, 2018 (Newsletter Issue 21/18)
Mexico to Use the Harmonised Database's List of Terms in TMclass
As of November 12, 2018, the Mexican Institute of Industrial Property (IMPI) will use the list of goods and services from the harmonised database (HDB) in TMclass and IMPI’s online tool ClasNiza.
Source: www.euipo.europa.eu
Dec 13, 2018 (Newsletter Issue 21/18)Revised Design Guidelines in Force NowOn October 1, 2018, the revised Guidelines for Examination of Registered Community Designs at the EUIPO entered into force.
EUIPO informs that the revision focused on a number of important issues, such as the role of product indications and functionality in designs, and incorporating recent Court rulings into the Guidelines.
The revision was also intended to update the Office’s practice on designs in view of the previous changes for trademarks triggered by the Legislative Reform process, for instance, on priority assessment.
To access the Guidelines, please click hereSource: www.euipo.europa.eu Oct 30, 2018 (Newsletter Issue 18/18)
Costa Rica Joined TMview and DesignView
As of October 22, 2018, the National Registry of the Republic of Costa Rica (RNPCR) has made its trademark and design data available to the TMview and DesignView search tools.
Source: www.oami.europa.eu
Oct 30, 2018 (Newsletter Issue 18/18)Examination Guidelines of RCD RevisedThe revised Guidelines for examination of registered Community designs (RCD) were adopted on September 14, 2018, and entered into force on October 1, 2018.
The EUIPO Guidelines are the main point of reference on EUIPO's current design practice for users of the Community design system and for professional advisers.
For further information and downloads, please check hereSource: www.euipo.europa.eu Oct 11, 2018 (Newsletter Issue 17/18)
Ecuador Joined TMclass
As of September 25, 2018, Ecuador’s National Service of Intellectual Rights (SENADI) joined TMclass with the latest version of the Nice classification.
Source: www.euipo.europa.eu
Sep 06, 2018 (Newsletter Issue 15/18)
Cuba Joins TMclass
As of August 8, 2018, the Cuban Office of Industrial Property (OCPI) joins TMclass with the latest version of the Nice classification.
Source: www.tmdn.org
Aug 22, 2018 (Newsletter Issue 14/18)
Several Countries Joined TMclass / DesignView
As of July 30, 2018, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has made its trade mark and design data available to the TMview and DesignView search tools. Also on July 30, 2018, the General Directorate of Intellectual Property of Honduras (DIGEPIH) has made its design data available to DesignView. Equally on July 30, 2018, DNPI and the National Registry Centre of El Salvador (CNR) join TMclass with the latest version of the Nice classification. Additionally on July 30, 2018, the National Registry of the Republic of Costa Rica (RNPCR) has decided to use the list of goods and services from the harmonised database (HDB) in TMclass.
Source: www.tmdn.org
Jun 14, 2018 (Newsletter Issue 11/18)
Montenegro Joins Designview
As of May 28, 2018, the Intellectual Property Office of Montenegro has made its design data available to the Designview search tool.
Source: www.oami.europa.eu
May 22, 2018 (Newsletter Issue 10/18)
Israel Joins TMview
As of May 14, 2018, the Israel Patent Office (ILPO) has made its trade mark data available to the TMview search tool.
Source: www.oami.europa.eu
May 22, 2018 (Newsletter Issue 10/18)
Moldova and Peru to Use the Harmonised Database's List of Terms in TMclass
As of May 7, 2018, the State Agency on Intellectual Property of the Republic of Moldova (AGEPI) and the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru (INDECOPI) will use the list of goods and services from the harmonised database (HDB) in TMclass.
These are the two first non-EU IP offices that will use terms from HDB.
Source: www.euipo.europa.eu
May 22, 2018 (Newsletter Issue 10/18)Replacement of Delegated and Implementing Regulations in ForceAs of May 14, 2018, the Delegated Regulation (EU) 2018/625 and the Implementing Regulation (EU) 2018/626 entered into force.
Both acts are the same as the legislation that they repeal (EU 2017/1430 and EU 2017/1431, respectively) but the new acts cross refer to the new codified EUTMR (EU) 2017/1001 and they contain some stylistic changes.
The regulations are available in several languages under Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626Source: www.euipo.europa.eu May 08, 2018 (Newsletter Issue 9/18)
Chile Joins TMview
As of April 26, 2018, the National Institute of Industrial Property Office of Chile (INAPI) has made its trademark data available to the TMview search tool.
Source: www.oami.europa.eu
Apr 26, 2018 (Newsletter Issue 8/18)UK Residents and Entities no Longer Eligible to Register .eu Domains post-BrexitOn March 28 2018, the Directorate-General for Communications Networks, Content and Technology, issued the following Notice to Stakeholders:
As of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date.
For further information, please see the Notice hereSource: www.ec.europa.eu Apr 26, 2018 (Newsletter Issue 8/18)
Jordan joins TMview and DesignView
As of April 23, 2018, the Jordanian Industrial Property Protection Directorate under The Ministry of Industry, Trade and Supply (IPPD) has made its trade mark and design data available to the TMview and DesignView search tools.
Source: www.tmdn.org
Apr 11, 2018 (Newsletter Issue 7/18)
ARIPO Joins TMclass
As of April 9, 2018, the African Regional Intellectual Property Organization (ARIPO) has joined TMclass.
Source: www.tmdn.org
Apr 11, 2018 (Newsletter Issue 7/18)
Georgia Joins Quality Standards Tool
The Georgian National Intellectual Property Center (Sakpatenti) has joined the Quality standards tool. It is the first IP office outside the EU to join.
Quality standards is an online search tool which provides accessible information on services and related quality standards (i.e., performance indicators) offered by each participating IP office.
Source: www.tmdn.org
Apr 11, 2018 (Newsletter Issue 7/18)Automatic Translation Service ProvidedEUIPO informs that it provides a translation service through the eSearch Case Law.
The translation service provides automatic translations for selected decisions accessible through the language acronym of interest (e.g. EN, FR, IT…) listed under “machine translation.”
The automatic translations are provided for information purposes only so that users have an immediate and general understanding of the content and meaning of case law documents. Afterwards, users can decide whether they still need to invest in a human translation of a decision.
The new automatic translation service is powered by eTranslation from the European Commission. The initially available languages have been selected on the basis of quality criteria. Further language combinations and decision types will be available in the future when they meet the quality criteria.Source: www.ec.europa.eu Mar 15, 2018 (Newsletter Issue 5/18)
Delegated and Implementing Regulations Adopted
On March 5, 2018, the European Commission adopted the new secondary legislation package for the EU trade mark comprising Delegated Regulation C(2018)1231 and Implementing Regulation C(2018)1225.
The publication of these acts in the Official Journal of the EU and their subsequent entry into force is subject to the right of the European Parliament and of the Council to lodge objections to Delegated Regulation C(2018)1231 in accordance with Article 208 of Regulation (EU) 2017/1001.
In substance the new acts will be the same as the legislation that they will replace (Delegated Regulation 2017/1430 and Implementing Regulation 2017/1431) but they will cross refer to the new codified EUTMR (EU) 2017/1001 and they will also contain stylistic changes in format and language.
The numbering of Articles will remain the same except for the transitional provisions at the end of both acts.
Source: www.euipo.europa.eu
Mar 15, 2018 (Newsletter Issue 5/18)EUIPO’s Bank Account ChangedOn February 17, 2018, one of the two bank accounts used by EUIPO to which users may transfer fees, current account replenishments and charges will change.
The BBVA bank account previously used by the Office was replaced by one with Banco Santander.
This change does not affect the bank account held by the Office at CaixaBank, which remains unchanged.
EUIPO’s online e-filing application has already been fully updated with the details of the new bank account number.
For more information on the two valid bank accounts, please check hereSource: www.euipo.europa.eu Mar 15, 2018 (Newsletter Issue 5/18)EU Commission Draft Withdrawal AgreementOn February 28, 2018, the European Commission has published the draft Withdrawal Agreement between the European Union and the United Kingdom.
The draft Withdrawal Agreement translates into legal terms the Joint Report from the negotiators of the European Union and the United Kingdom Government on the progress achieved during phase 1 of the negotiations, published on December 8, 2017, and proposes text for those outstanding withdrawal issues which are mentioned in, but not set out in detail, in the Joint Report. It also integrates the text on the transition period, based on the supplementary negotiating directives adopted by the Council (Article 50) on January 29, 2018.
The draft text which will now be discussed with the European Council and the Brexit Steering Group of the European Parliament before presentation to the UK Government for negotiation. The draft text is encouraging as it confirms that the EU is willing to agree to a seamless protection for trademark and design right-holders. In particular, the text envisages the creation of a corresponding UK trademark and design registration replicating any existing EU trademark and design registration without the need for re-examination by the UK Intellectual Property Office.
The text of the Agreement is a draft version and is subject to change. It can be seen here
It should be noted that European patents are not mentioned in the text because patents are unaffected by the withdrawal of the UK from the European Union.
Source: www.europa.eu; www.jakemp.com Feb 13, 2018 (Newsletter Issue 3/18)
India Joined Designview
As of January 19, 2018, the Indian Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) has made its design data available to the Designview search tool.
Source: www.euipo.europa.eu
Feb 13, 2018 (Newsletter Issue 3/18)Further Document on Withdrawal of UK from the EUEUIPO has prepared a Questions and Answers (Q&A) document on EU trademarks and registered Community designs in the context of the notification of the intention of the United Kingdom to withdraw from the European Union.
The Q&A document is in line with the Commission's recommendations and published for information purposes only.
This document complements the Notice published by the Commission and made available on EUIPO’s website on December 5, 2017 as earlier reported on Country Index. A revised version of this Notice was released by the Commission on January 22, 2018, which can be seen here
The Notice and Q&A correspond to a potential scenario in which no agreement is reached by the negotiating parties. The contents of these documents are in no way prejudicial to any settlement or arrangement that may be agreed between the negotiating parties.Source: www.euipo.europa.eu Feb 13, 2018 (Newsletter Issue 3/18)New Back Office Released Soon EUIPO informs on its website that the new back Office will be introduced for the weekend February 24-25, 2018. During this time all online filing applications of the EUIPO website will remain accessible and users will be able to proceed normally with their applications. EUIPO’s customer service, technical, communication and operations teams will remain on hold to deal with any issues that may arise during and after the release. All communications will be channelled via the website and the Office’s Twitter account, @EU_IPO.
The release is part of the Office’s Strategic Plan and aims at the integration of all the IT systems used for managing EUIPO’s trade mark and design registration services. The ultimate outcome is to support all IP processes at the Office on a single platform in order to gain agility and flexibility and to form the backbone of a fully-fledged e-organisation. More than 400 examiners of the Office will benefit from this weekend’s release covering EUTM examination, opposition and Registered Community Design (RCD) invalidity.
The IP Tool programme started in 2016.
The first phases involved recordals, renewals and EUTM cancellation process. Later in 2018 the next phase will integrate all Madrid processes as well as RCD examination. The integration of appeal and litigation proceedings later in 2019 will bring the programme to a close.Source: www.euipo.europa.eu Feb 13, 2018 (Newsletter Issue 3/18)Consultation on “Counterfeit and Piracy Watch-List” LaunchedOn January 22, 2018, the European Commission launched a public consultation to establish its first world-wide "Counterfeit and Piracy Watch-List".
The aim is to identify the marketplaces outside the EU where counterfeiting, piracy or other forms of intellectual property abuse are common practice. The initiative is part of the Commission's strategy announced in the 2017 Communication "A balanced Intellectual Property enforcement system responding to today's societal challenges". Based on stakeholders' input, the future watch-list will help to raise awareness of consumers that might be buying products in those marketplaces, and encourage their operators and owners to crack down on intellectual property abuse.
The Commission will also monitor the measures taken by local authorities to reduce the availability of goods and services infringing intellectual property rights in identified markets.
Intellectual property infringement is a particular scourge on European industry and hampers investment and employment in industries reliant on creativity and innovation. According to the European Union Intellectual Property Office (EUIPO) and the OECD, trade in counterfeit and pirated products amount to around €338 billion worldwide. The European Union is particularly affected, with counterfeit and pirated products amounting up to around 5% of all imports or as much as €85 billion a year.
Contributions to the public consultation should be sent before March 31, 2018, to TRADE-IPMARKETSWATCH-LIST@ec.europa.eu.
For more information, please click hereSource: www.trade.ec.europa.eu Dec 20, 2017 (Newsletter Issue 22/17)Common Communication on New Types of TrademarksOn December 4, 2017, EUIPO published a Common Communication on the representation of new types of trademarks to ensure a smooth transition.
Common Communication gives a complete overview of the state of play of each Office’s transposition process, showing:
- the types of trade mark each Office plans to accept
- the definitions thereof;
- the accepted electronic file formats for sound, motion, multimedia and hologram marks.
The Common Communication also contains an Annex.
After the first publication, the Communication will be updated on a six-monthly basis to reflect the developing positions of the Offices as they advance with the transposition process. The first update is scheduled for June 1, 2018.
Source: www.euipo.europa.eu Dec 20, 2017 (Newsletter Issue 22/17)Notice on Withdrawal of UK from the EUThe European Commission has prepared a Notice, countersigned by EUIPO, to holders of and applicants for European Union trademarks and Registered Community Designs in the context of the notification of the intention of the United Kingdom to withdraw from the European Union, submitted on March 29, 2017.
This Notice corresponds to a potential scenario in which no agreement is reached by the negotiating parties.
It has been pointed out that the contents of this Notice are in no way prejudicial to any settlement or arrangement that may be agreed between the negotiating parties.
The Notice can be consulted here
Source: www.euipo.europa.eu
Dec 20, 2017 (Newsletter Issue 22/17)Soon No Applications / Renewals by Fax AcceptedEUIPO reminds it users that, in accordance with Decision EX-17-4 of the Executive Director of EUIPO, from January 1, 2018, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing.
Further information on the Decision EX-17-4 can be seen here
Source: www.ec.europa.eu Dec 05, 2017 (Newsletter Issue 21/17)
Several Countries Joined Designview
As of November 20, 2017, the National Institute of Industrial Property of Argentina (INPI), the Swiss Federal Institute of Intellectual Property (IPI) and the State Agency on Intellectual Property of the Republic of Moldova (AGEPI) have made their design data available to the Designview search tool.
The Japan Patent Office (JPO) joined Designview as of December 4, 2017.
Source: www.tmdn.org
Dec 05, 2017 (Newsletter Issue 21/17)IP Enforcement Policy by European Commission IssuedOn November 29, 2017, the European Commission presents measures to ensure that intellectual property rights are well protected. The Commission's objective is to encourage European companies, in particular SMEs and start-ups, to invest in innovation and creativity.
The Commission seeks to deprive commercial-scale IP infringers of the revenue flows that make their criminal activity lucrative. It also ensures that enforcement actions are adapted to the requirements of today's digital age. The Commission aims to:
- Ensure an equally high level of legal protection and a predictable judicial framework across the EU. The new guidance clarifies on differing interpretations among memeber states regarding the 2004 Directive on the enforcement of intellectual property rights (IPRED).
- Encourage industry to fight IP infringements Based on the positive experiences with the Memorandum of Understanding on the sale of counterfeit goods via the internet the Commission continues to support industry-led initiatives to combat IP infringements by several agreements which complement the recent guidelines for online platforms to tackle illegal content.
- Reduce the volume of counterfeited products reaching the EU market.The Commission proposes to reinforce cooperation programmes with third countries (China, South-East Asia, and Latin America) and create a watch-list of markets that are reported to engage in, or facilitate, substantial IPR infringement. The Commission will publish an updated report on IPR enforcement in third countries. The Commission will step up co-operation between EU customs authorities, notably by assessing the implementation of the EU Customs Action Plan on IP infringements for 2013-2017 and proposing more targeted assistance to national customs authorities.
For more information, please check here
Source: www.ec.europa.eu Nov 22, 2017 (Newsletter Issue 20/17)
DesignClass Integrated in EUIPO’s Design E-Filing
EUIPO’s design e-filing is now connected to DesignClass, the online tool for harmonised product indications, which helps users to find product indications in the Harmonised Database that best match the goods to which a design applies.
Source: www.tmdn.org
Nov 07, 2017 (Newsletter Issue 19/17)
San Marino Joins TMview and DesignView
As of 16 October 2017, the Patents and Trademarks Office of the Republic of San Marino (USBM) has made its trade mark and design data available to the TMview and DesignView search tools.
Source: www.ec.europa.eu
Nov 07, 2017 (Newsletter Issue 19/17)
Moldova Joins TMclass
As of 23 October 2017, the State Agency on Intellectual Property of the Republic of Moldova (AGEPI) has joined TMclass.
Source: www.euipo.europa.eu
Oct 24, 2017 (Newsletter Issue 18/17)
Jordan Joins TMclass
As of October 10, 2017, the Jordanian Industrial Property Protection Directorate under the Ministry of Industry, Trade and Supply (IPPD) has joined TMclass.
Source: www.tmdn.org
Oct 24, 2017 (Newsletter Issue 18/17)Four Decisions of EUIPO's Executive DirectorThe Executive Director of EUIPO has signed four new decisions related to the changes which will came into effect on October 1, 2017, as a result of the second wave of the Legislative Reform process. All decisions apply as and from the entry into force date October 1, 2017:
Decision No EX-17-3 concerning the formal requirements of priority and seniority claims for EUTMs and IRs designating the EU setting out the requirements where information is available online, when documentation is required and rules on translations;
Decision No EX-17-5 concerning the formal requirements of priority claims for registered Community designs including the relaxation of requirements for a copy of earlier filing certificate;
Decision No EX-17-6 concerning technical specifications for annexes submitted on data carriers setting out the specific media accepted as data carriers, file formats and sizes, the treatment of incomplete or illegible annexes and the consequences of non-compliance;
Decision No EX-17-7 concerning methods of payment of fees and charges covering issues such as the priority of administrative charges over other fees, lack of funds, the minimum amount to open an account, ‘insignificant amounts’ for refunds, the misuse of accounts and payments by credit/debit cards and current accounts.
The new decisions were published on September 26, 2017, and can be consulted on the Office’s website here
These decisions are in addition to Decision no EX-17-4 concerning communications by electronic means (including important changes relating to fax communications) which also applies as and from October 1, 2017.
Source: www.euipo.europa.eu Oct 05, 2017 (Newsletter Issue 17/17)
Peru Joins Designview
As of September 18, 2017, the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru (INDECOPI) has made its industrial design data available to the Designview search tool.
Source: www.tmdn.org
Oct 05, 2017 (Newsletter Issue 17/17)Certification Marks Introduced / No Longer Requirements for Graphical Representation As from October 1, 2017, EUIPO introduced certification marks which are a new kind of trade mark at EU level. EU certification marks relate to the guarantee of specific characteristics of certain goods and services.
It indicates that the goods and services bearing the mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner, irrespective of the identity of the undertaking that actually produces or provides the goods and services at issue and actually uses the certification mark.
However, certification marks cannot be used to indicate the geographical origin of products or services and it cannot be owned by a person carrying out a business involving the supply of the goods and services of the kind certified.
Applicants have to include a statement in their application when applying for a certification mark. Also, within 2 months of the date of the filing the regulations governing the use of the certification mark has to be submitted.
Also, the graphical representation requirement no longer applies when submitting a trademark application as and from October 1, 2017.
Signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
The result is a 'what you see is what you get' system, which aspires to make the trade mark entries on the EUTM Register clearer, more accessible and easier to search for.
Article 3 of the EU trade mark Implementing Regulation (EUTMIR) lays down specific rules and requirements for the representation of some of the most popular types of trade mark, including some technical requirements, in accordance with the specific nature and attributes of the trade mark in question.
Please check EUIPO’s website on the introduction of certification marks and the lapse of graphical representation requirement for further information. Additional procedural changes which apply as well from October 1, 2017, can be found here
Source: www.euipo.europa.eu Sep 20, 2017 (Newsletter Issue 16/17)Main Principles of EU Position on Brexit NegotiationsThe European Commission (EC) has published a position paper transmitted to EU27 on intellectual property rights including geographical indications. The paper contains the main principles of the EU position for the dialogue on Intellectual Property rights in the Brexit negotiations.
For further information, please read the article of Bond Dickinson LLP here
Source: www.ec.europa.eu Sep 20, 2017 (Newsletter Issue 16/17)
San Marino Joins TMclass
As of July 31, 2017, the Patents and Trademarks Office of the Republic of San Marino (USBM) joined TMclass.
Source: www.euipo.europa.eu
Sep 05, 2017 (Newsletter Issue 15/17)
Germany Joins DesignView
As of August 7, 2017, design data from the German Patent and Trade Mark Office (DPMA) has been added to DesignView.
Source: www.oami.europa.eu
Sep 05, 2017 (Newsletter Issue 15/17)Decision Concerning Communication by FaxOn August 16, 2017, EUIPO has published Decision No EX-17-4 to set out the accepted means of electronic communication with the Office including an Annex with technical requirements, size and formats for attachments to electronic filing and communication.
The Decision takes into account the legislative reform changes applying from October 1, 2017, and the changing communications landscape, in particular on the use of fax.
From October 1, 2017, fax falls within the definition of communication by electronic means.
From January 1, 2018, fax will no longer be accepted for filing EUTM applications or renewals except as a backup system if technical malfunctions prevent e-filing.
Further, as of October 1, 2017, applications for trademarks where the representation has a colour component (including figurative marks) cannot be filed by fax because there are no legal provisions that facilitate the subsequent filing of a representation in colour.
For more information, please click here
Source: www.euipo.europa.eu Sep 05, 2017 (Newsletter Issue 15/17)Implementing and Delegated Regulations on Trademark Reform PublishedThe Commission Implementing Regulation (EU) 2017/1431 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trademark and the Commission Delegated Regulation (EU) 2017/1430 supplementing Council Regulation (EC) No 207/2009 on the European Union trademark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 were published in the Official Journal of the European Union on August 8, 2017.
The provisions in both texts are due to apply from October 1, 2017.
For more information on the EUTM regulation and the forthcoming changes, please check here
Source: www.euipo.europa.eu Jul 25, 2017 (Newsletter Issue 14/17)
Israel Joins TMclass
As of July 17, 2017, the Israel Patent Office (ILPO) has joined TMclass.
Source: www.oami.europa.eu
Jul 11, 2017 (Newsletter Issue 13/17)Codified Version of EUTM Regulation PublishedThe Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017 on the European Union trade mark, codifying Council Regulation (EC) 207/2009 (EUTMR) has been published in the Official Journal of the European Union.
The Regulation (EU) 2017/1001 repeals Regulation (EC) 207/2009, and will apply from October 1, 2017. Secondary legislation adopted on May 18, 2017 in the form of two separate acts, a Delegated Regulation (EUTMDR) and an Implementing Regulation (EUTMIR) will also apply from October 1, 2017.
The changes intend to make the EU trademark system more efficient and consistent and adapt it to the internet era. They concern the following areas:
- Abolition of graphical representation requirement
- Introduction of certification marks
- Requirement to file priority claims together with the EUTM application
- Possibility to invoke acquired distinctiveness as a subsidiary claim
- Alignment of provisions for cancellation proceedings with those for opposition proceedings
- Recognition of online sources for substantiation purposes
- Simplified requirements for translation
- Enhanced acceptance of electronic means of communication by and with the Office
- Introduction of strict formal requirements on structure and presentation of evidence
- Consolidation of provisions relating to the Boards of Appeal
For further information, please click here
Source: www.euipo.europa.eu Jul 11, 2017 (Newsletter Issue 13/17)
Colombia Joins TMview
As of June 19, 2017, the Colombian Superintendence of Industry and Commerce (SIC) has made its trademark data available to the TMview search tool.
Source: www.oami.europa.eu
Jul 11, 2017 (Newsletter Issue 13/17)
Bosnia and Herzegovina Joins Designview
As of June 12, 2017, the Institute for Intellectual Property of Bosnia and Herzegovina (IIP-BIH) has made its industrial design data available to the Designview search tool.
Source: www.oami.europa.eu
Jul 11, 2017 (Newsletter Issue 13/17)Case-Law Overview 2016 from General Court/ Court of JusticeThe Legal Practice Service of EUIPO has prepared an overview of case-law from the General Court (GC) and Court of Justice (CJ) in Luxembourg on trademark and design matters.
The overview includes abstracts of judgments, preliminary rulings and important orders rendered by the GC and CJ in 2016.
Source: www.oami.europa.eu Jun 14, 2017 (Newsletter Issue 11/17)EU Trade Mark Implementing and Delegated Regulations The secondary legislation package on the European Union trade mark - consisting of a Commission Implementing Regulation laying down detailed rules for certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark (Implementing Regulation) and a Commission Delegated Regulation supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (Delegated Regulation) was adopted by the European Commission on May 18, 2017.
Both texts, in all language versions, are publicly available at the European Commission's Better Regulation Portal using the following links:
Implementing Regulation: Implementing regulations enable the Commission to set conditions that ensure all national governments implement EU laws in the same way. Implementing regulations are directly applicable in all EU countries. Therefore, EU countries do not need to take further steps to incorporate them into their national legislation.
Delegated Regulation: Delegated regulations enable the Commission to supplement or amend non‑essential parts of EU laws. For example, in order to define detailed measures related to a law.
The Commission adopts the delegated regulation and if Parliament and Council have no objections, it enters into force. It then becomes directly applicable in all EU countries.
It is one of the final stages of the European Union trade mark reform. It has to be noted that the official publication of these two acts in the Official Journal of the European Union and their subsequent entry into force are still subject to the European Parliament and/or Council not raising an objection during the scrutiny period.
Source: www.euipo.europa.eu Jun 14, 2017 (Newsletter Issue 11/17)New Online Form for International ApplicationsEUIPO informs about the new online form where EUIPO’s users can file a request for an international trademark application through the Madrid Protocol system administered by the World Intellectual Property Office (WIPO). In order to access the form EUIPO’s users will just need to log in.
The form can be accessed in various ways on the EUIPO’s website:
- Through the Dashboard in your User Area
- Via the Online Services hub
- From the Forms and Filings page
- Via eSearch plus in the ‘Actions and communications’ section
Applications can be based on one or more EU trademarks or EU trademark applications. Like the other electronic forms of the Office, users can save their work as a draft at any time in the process, and return to it later.
The European Union ratified the Madrid Protocol in 2004, allowing the EUIPO to accept international registrations of trademarks and to forward international applications from its users to the WIPO.
Up until now, the only way to file an international application based on an EU trademark application was to send the application using a paper form, which tended to produce more formality deficiencies.
Source: www.euipo.europa.eu Jun 14, 2017 (Newsletter Issue 11/17)
Visual search for EUIPO, INPI and UKIPO Trademarks in TMview
It is now possible to search trademarks from EUIPO, the Institut national de la propriété industrielle (INPI) and the United Kingdom Intellectual Property Office (UKIPO) within TMview using images.
Source: www.euipo.europa.eu
May 17, 2017 (Newsletter Issue 9/17)
India Joined TMview and Philippines Joined Designview
As of April 26, 2017, the Indian Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM) has made its trade mark data available to the TMview search tool.
Further, the Intellectual Property Office of the Philippines (IPOPHL) has made its industrial design data available to the Designview search tool on the same date.
Source: www.tmview.org
May 17, 2017 (Newsletter Issue 9/17)New Online Tool eAppeal IntroducedEUIPO informs the a new eAppeal is available since April 10, 2017, which allows users to file an appeal online.
eAppeal is easy to use and can be accessed directly from the user area of the EUIPO website, and through the online services page. It can also be entered under Actions and Communications after accessing the file in eSearch plus. The entire process has just four steps.
For more information, please see here
Source: www.euipo.europa.eu
Mar 29, 2017 (Newsletter Issue 6/17)Revised Guidelines Entered into Force On February 1, 2017, the first part of EUIPO's revised Guidelines for Examination of European Union Trade Marks and Registered Community Designs for 2017 entered into force.
The Guidelines have been thoroughly updated with case law from the Court of Justice of the European Union, the case law of EUIPO’s Boards of Appeal and the outcome of the Convergence Programmes.
The new Guidelines can be accessed on EUIPO’s website on the Current trade mark practice and Current design practice pages.
Source: www.euipo.europa.eu Jan 25, 2017 (Newsletter Issue 2/17)DesignClass Phase II LaunchedEUIPO informs that Phase II of the design classification tool, DesignClass, was launched on January 7, 2017.
The tool offers users and IP Offices a harmonised database of approximately 15,000 product indications, including the Locarno 11th Edition Classification terms.
It is the result of collaboration between 24 participating EU Offices, 4 non-EU IP Offices, 2 User Associations, WIPO and EUIPO, who worked to pre-approve the harmonised product indications in 23 EU languages.
More information on DesignClass, including FAQs and tutorials, can be found here
Source: www.euipo.europa.eu Jan 25, 2017 (Newsletter Issue 2/17)
Malaysia Joined TMclass and TMview
In December 2016, the Intellectual Property Corporation of Malaysia (MyIPO) has made its trademark data available to the TMclass and TMview search tool.
Source: www.tmdn.org
Jan 11, 2017 (Newsletter Issue 1/17)
New Assistance Service
EUIPO informs about a new service for classification and formalities assistance. The service provides guidance when selecting the type of marks, introducing a colour claim, and claiming priority or seniority. However, no legal advice will be covered by the new service.
It is available to users, both before and during the application process, in the five working languages of the Office (English, French, German, Italian and Spanish).
Source: www.euipo.europa.eu
Jan 11, 2017 (Newsletter Issue 1/17)Guidelines for Examination of EU Trade Marks and Registered Community Designs RevisedOn December 12, 2016, the Decision adopting the first part of the revised Office Guidelines was signed. They will enter into force on February 1, 2017.
The new Guidelines will be published on the EUIPO’s website on the Current trade mark practice and Current design practice pages. The Guidelines have been fully updated with case law from the Court of Justice of the European Union and from the EUIPO’s Boards of Appeal.
The EUIPO Guidelines are the main point of reference for users of the European Union trade mark and design systems, as well as professional advisors who want to make sure they have the latest information on the Office’s examination processes.
Source: www.euipo.europa.eu Nov 22, 2016 (Newsletter Issue 21/16)
Colombia Joins DesignView
As of November 21, 2016, the Colombian Superintendence of Industry and Commerce (SIC) has made its industrial design data available to the DesignView search tool.
Source: www.tmdn.org
Nov 09, 2016 (Newsletter Issue 20/16)
ARIPO Joined Designview
As of October 31, 2016, the African Regional Intellectual Property Organization (ARIPO) has made its industrial design data available to the Designview search tool.
Source: www.tmdn.org
Nov 09, 2016 (Newsletter Issue 20/16)
Philippines Joined TMclass
As of October 24, 2016, the Intellectual Property Office of the Philippines (IPOPHL) has joined TMclass.
Source: www.tmdn.org
Nov 09, 2016 (Newsletter Issue 20/16)Administration Cooperation Portal Went LiveThe administration cooperation portal tool "ECP4 EU" went online on October 29, 2016.
The "ECP4 EU" tool focusses on shared services and practices among the European Union IP Offices promoting the development of common examination standards and practices in cooperation.
This tool is one of the first of the new European Cooperation under SP2020 (the Consultation on the Strategic Plan 2020) which went online. Each tool is reflecting a different objective. The tools are built on the collaborative and cooperative work carried out by all the partners in the European Trade Mark and Design Network.
For more information, please here
Source: www.euipo.europa.eu Oct 26, 2016 (Newsletter Issue 19/16)
Brazil joined Designview
As of October 17, 2016, the National Institute for Intellectual Property of Brazil (INPI) has made its industrial design data available to the Designview search tool.
Source: www.euipo.europa.eu
Oct 26, 2016 (Newsletter Issue 19/16)Reorganisation of the OfficeA new organisational decision has been published on EUIPO's website.
The reorganisation aims to adjust the Office to the new challenges contained within the Legislative Reform and the Strategic Plan 2020, in particular, the Office’s enhanced international cooperation activities, and the objective of digital transformation apart from minor adjustments to update the ongoing activities of each department.
The new organisational chart can be seen here. For further information, please check here
Source: www.euipo.europa.eu Oct 12, 2016 (Newsletter Issue 18/16)New Features of Recordal FormsEUIPO has introduced several functional improvements to their online recordal forms as well as a new form for seniority cancellations. Users can also pay by credit card when submitting a total transfer for a Registered Community design.
The new features of recordals are the following:
- total transfer
- partial transfer
- seniority claim
- NEW seniority cancellation
- change of representative.
For more information, please check here
Source: www.euipo.europa.eu Oct 12, 2016 (Newsletter Issue 18/16)
International Registrations in TMview Updated
As of September 19, 2016, the International Registrations from the World Intellectual Property Organization (WIPO) have been updated in TMview.
WIPO now also provides International Registrations in the filed, ended and expired statuses as well as more detailed information on recordals.
Source: www.tmdn.org
Aug 30, 2016 (Newsletter Issue 15/16)Revised Office Guidelines PublishedEUIPO has adopted the second part of the revised Office Guidelines which entered into force on August 1, 2016.
The new Guidelines are available on the EUIPO's website under the Current trade mark practice and Current designs practice pages.
The Guidelines have been updated with case law from the Court of Justice of the EU, the case law of EUIPO's Boards of Appeal, and the outcome of the Convergence Programmes. The revision of the Guidelines will increase consistency and predictability for users, and is aligned with the goals of EUIPO's Strategic Plan.
source: www.euipo.europa.eu Aug 30, 2016 (Newsletter Issue 15/16)
Deadline for Specifying Class Headings Soon Expired
The deadline for specifying class headings in accordance with the EU trademark reform will soon expire: declarations under Article 28(8) EUTMR must be submitted to the EUIPO before September 24, 2016.
As reported earlier, Article 28(8) of EUTMR allows for a transitional period of six months during which proprietors of EUTMs applied for before June 22, 2012, and registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.
Source: www.euipo.europa.eu
Jul 12, 2016 (Newsletter Issue 13/16)All EU Laws Fully in Force in United KingdomEUIPO informs that the United Kingdom remains a member of the European Union, with all the rights and obligations that derive from this. According to the Treaties which the United Kingdom has ratified, EU law continues to apply to the full to and in the United Kingdom until it is no longer a member.
Unless and until the process in article 50 of the Lisbon Treaty is triggered by the United Kingdom, the formal process for the United Kingdom to exit the EU will not commence. The negotiations once article 50 has been triggered will last up to two years, longer if agreed by the consent of all member states.
To access the statement, please click here
Source: www.euipo.europa.eu Jul 12, 2016 (Newsletter Issue 13/16)
Albania and Georgia Joined TMview and DesignView
As of July 4, 2016, the Albanian General Directorate of Patents and Trademarks (GDPT) has made its trade mark and design data available to the TMview and DesignView search tools.
As of July 7, 2016, the National Intellectual Property Center of Georgia (NIPCG) has made its trade mark and design data available to the TMview and Designview search tools.
Source: www.tmdn.org
Jun 28, 2016 (Newsletter Issue 12/16)
WIPO Joins Designview
As of June 20, 2016, the World Intellectual Property Organization (WIPO) has made its international design data available to the Designview search tool.
Source: www.tmdn.org
Jun 28, 2016 (Newsletter Issue 12/16)Mobile and Tablet Application LaunchedEUIPO announced on its website that a new native application for smartphones and tablets has been launched. With this new app users can perform searches of EUIPO’s databases of trademarks, designs, owners and representatives from everywhere.
In 2013 EUIPO merged two databases for trademarks and designs into a single search tool, eSearch plus. The Office then complemented it with data on owners, representatives and the Bulletin. In 2015 EUIPO released a new feature to search for images with a quick and simple drag-and-drop function. Now, EUIPO launched the eSearch plus app which is available for download from the Apple store itunes and the Android App store.
For more information, please click here
Source: www.euipo.europa.eu Jun 14, 2016 (Newsletter Issue 11/16)
Albania and Georgia Joined TMclass
As of May 30, 2016, the Albanian General Directorate of Patents and Trademarks (GDPT) and the Georgian National Intellectual Property Center (SAKPATENTI) joined TMclass.
Source: www.euipo.europa.eu
May 18, 2016 (Newsletter Issue 9/16)Equivalent Terms for Nice Class HeadingsEUIPO published a list of equivalent terms for the Nice Class Headings which are taken from the Harmonised database (HDB). The data for goods and services is pre-approved by every national and regional IP office in the European Union.
Many users rely on the Nice class headings to determine their choice of goods and services, to ensure that they can reap the benefits offered by the harmonised terms, namely guaranteed acceptance in every IP office of the EU and the possibility of Fast Track processing.
For more information, please check here
Source: www.euipo.europa.eu May 18, 2016 (Newsletter Issue 9/16)Information on Declarations under Article 28(8) EUIPO informed that the online form for declarations under Article 28(8) is accessible through the User Area EUIPO’s website.
Article 28(8) of EUTMR, amended by Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation, allows for a transitional period of six months during which proprietors of EUTMs applied for before June 22, 2012 and registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.
Further, the Office reminds that there will be various requirements (formal, regarding the mark and regarding the content of the declaration). For further information, please check here
Source: www.euipo.europa.eu May 02, 2016 (Newsletter Issue 8/16)
Peru and Colombia Joined TMclass
As of April 18, 2016, the Peruvian National Institute for the Defense of Free Competition and the Protection of Intellectual Property (INDECOPI) joined TMclass.
Further, as of April 25, 2016, the Colombian Superintendence of Industry and Commerce (SIC) joined TMclass.
Source: www.euipo.europa.eu
Apr 20, 2016 (Newsletter Issue 7/16)
Brunei and Cambodia Joined TMclass
As of March 21, 2016, Brunei Darussalam Intellectual Property Office (BruIPO) and the Department of Intellectual Property of the Ministry of Commerce of Cambodia (D/IPR) have joined TMclass.
Source: www.euipo.europa.eu
Apr 20, 2016 (Newsletter Issue 7/16)Start Date for Opposition Against IR Designating EU ChangedThe Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation entered into force on March 23, 2016.
The Amending Regulation brings about a number of changes in the areas of examination proceedings, absolute grounds of refusal, relative grounds of refusal, goods and services, opposition and cancellation proceedings and appeals.
With regard to opposition and cancellation proceedings, the main changes are the following:
- Changes to the start date for the opposition period against international registrations designating the EU. This period will now start one month after the date of publication.
- The Amending Regulation introduces some changes as regards counterclaims before EU trade mark courts. In this respect, EU trade mark courts will not proceed with the examination of counterclaims until either the interested party or the court have informed the Office of the date on which the counterclaim was filed.
- The Amending Regulation imposes on the Office the obligation to inform the EU trade mark court in question of any previous application for revocation or for a declaration of invalidity filed before the Office.
For further information on changes in the areas of examination proceedings, absolute grounds of refusal, relative grounds of refusal, goods and services and appeals, please click here
Source: www.euipo.europa.eu Apr 05, 2016 (Newsletter Issue 6/16)Change of Office Name and FeesOHIM announced on its website that OHIM's office name has changed to the European Union Intellectual Property Office (EUIPO) as of March 23, 2016. These changes took effect upon the entry into force of Regulation (EU) 2015/2424.
The website, e-business applications, fee calculators and online tools have all been updated to reflect the change of name, the new trade mark fee structure and other technical changes brought about by the Regulation.
The new fee structure will apply with a one-fee-per-class system. The official fee for filing a European Union Trademark is EUR 1,000 for the first class in paper and EUR 850 electronically. The fee for the second class is EUR 50 and the fee for the third class is EUR 150. The fee for all subsequent classes is EUR 150.
Source: www.euipo.europa.eu
Feb 17, 2016 (Newsletter Issue 3/16)Framework for Declarations under Art. 28(8) EUTMROHIM has issued a Communication on Article 28(8) of the amending EU trade mark Regulation, which will enter into force on March 23, 2016.
Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of EU trade marks applied for before June 22, 2012, and registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.
In essence, this means that from the end of the transitional period, all trade marks containing class headings will be interpreted according to their literal meaning regardless of their filing date.
The Communication of the President of OHIM sets the framework for proceedings before the Office for entering a declaration under Article 28(8) EUTMR in the Register. It also provides an Annex containing a non-exhaustive list of examples of goods and services clearly not covered by the literal meaning of the general indications of the Nice class headings for each of the editions of the Nice classification concerned (6th to the 10th edition) to assist users in making their declarations.
For further information and to access a list of 'Frequently Asked Questions' can be seen here
Source: www.oami.europa.eu Feb 02, 2016 (Newsletter Issue 2/16)
Brazil Joins TMclass
As of January 19, 2016, the Brazilian National Institute of Industrial Property (INPI-BR) has joined TMclass.
Source: www.tmdn.org
Feb 02, 2016 (Newsletter Issue 2/16)Renewal Fees Reimbursed OHIM announced on its website that the Office is committed to reimburse its users who have already paid for the renewal of a trademark expiring after March 23, 2016 under the CTM fee schedule. These users will be refunded the excess fee they have paid; equal to the difference between the CTM fee schedule and the EUTM fee schedule.
The reimbursement method will vary according to the payment method:
- Users who have indicated “debit later” will see a correction in the “Pending Debit “ tab of Current Account information in the User Area, once the Office has corrected the expected debit (during February and March 2016). No individual communication will be sent to these users.
- Users who have paid by the “debit now” method will be directly reimbursed in their current account, and a letter informing them about the reimbursement will be sent to them.
- Users who have paid by bank transfer or credit card will receive a letter from the Office requesting bank details through which the reimbursement can be paid.
Letters informing about current account reimbursement or requesting bank details will be sent during the months of April to August following a First Paid, First Reimbursed approach.
Reimbursement to users having paid with bank transfer or credit card will be done within two months after the reception by the Office of their bank details.
For more information on the Communication of the President of OHIM on the calculation of the amount of renewal fees in view of the entry into force of the amending EU trade mark Regulation, please click here
Source: www.oami.europa.eu Jan 20, 2016 (Newsletter Issue 1/16)Major Changes at OHIM in Force Soon Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union. The Amending Regulation will enter into force on March 23, 2016. From that day, the Office will be called the "European Union Intellectual Property Office" (EUIPO) and the Community trade mark will be called the "European Union trade mark".
Further amendments:
- A new one-fee-per-class system for trade mark application and renewal fees
- An overall decrease in trade mark application and renewal fees payable to the Office, for the benefit of our users
Currently, the Community trade mark included protection for three classes, costing EUR 900 for an electronic application and EUR 1,050 for a paper application. After the enforcement of the Amending Regulation applicants will pay a lower fee if they apply for less than three classes. Renewal fees are substantially reduced in all instances and set to the same level as application fees, and there are also reductions in opposition, cancellation and appeal fees.
More details on the revised fee structure, and other technical changes are available in 23 different languages here
Moreover, on March 23, 2016, the date of entry into force of the amending Regulation, all the Office's online tools and services will be fully updated to reflect the changes in the fee structure. The online fee calculator and list of fees payable will also be updated. On March 23, 2016, an updated version of the Guidelines for Examination will also enter into force, which will reflect the changes introduced by its amendments in the Office's trade mark examination practice.
Please also check the article of DLA Piper for more information here
Source: www.oami.europa.eu Jan 20, 2016 (Newsletter Issue 1/16)
ARIPO and Bosnia and Herzegovina Join TMview
As of December 7, 2015, the African Regional Intellectual Property Organization (ARIPO) and the Institute for Intellectual Property of Bosnia and Herzegovina (IIP-BIH) have made their trade mark data available to the TMview search tool.
ARIPO’s member states are Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe (a total of 19 member states).
Source: www.tmdn.org
Dec 08, 2015 (Newsletter Issue 19/15)
Japan Joins TMview
As of November 23, 2015, the Japanese Patent Office (JPO) has made its trade mark data available to the TMview trade mark search tool.
Source: www.tmdn.org
Dec 08, 2015 (Newsletter Issue 19/15)
Finland Joins DesignView
As of November 30, 2015, the Finnish Patent and Registration Office (PRH) has made its design data available to the DesignView search tool.
Source: www.tmdn.org
Nov 11, 2015 (Newsletter Issue 17/15)
Poland and Serbia Join Designview
As of October 26, 2015, the Polish Patent Office (PPO) and the Intellectual Property Office of the Republic of Serbia (IPORS) have made their industrial design data available to the Designview search tool.
Source: www.tmdn.org
Nov 11, 2015 (Newsletter Issue 17/15)
Switzerland Joins TMview
As of October 26, 2015, the Swiss Federal Institute of Intellectual Property (IGE - IPI) has made its trade mark data available to the TMview trade mark search tool.
Source: www.tmview.org
Oct 28, 2015 (Newsletter Issue 16/15)
Macedonia Joins Designview
As of October 5, 2015, the State Office of Industrial Property (SOIP) of The Former Yugoslav Republic of Macedonia (FYROM) has made its industrial design data available to the Designview search tool.
Source: www.tmdn.org
Oct 28, 2015 (Newsletter Issue 16/15)Notice on Practice of Distinctiveness - Figurative MarksThe IP offices of the European Trade Mark and Design Network have agreed on a Common Practice in relation to when a figurative mark, containing purely descriptive/non-distinctive words, passes the absolute grounds examination because the figurative element renders sufficient distinctive character.
The project was initiated by the Office for Harmonization in the Internal market (OHIM) because there was a notable divergence among national European IP offices and the OHIM.
The Notice on the Common Communication on the Common Practice of Distinctiveness - Figurative Marks containing descriptive/non-distinctive words is published here
and for explanations to the (FAQ) on Common Practice CP 3. Distinctiveness - Figurative Marks containing descriptive/non-distinctive words please click here.
Source: www.dpma.de and www.tmdn.org Sep 29, 2015 (Newsletter Issue 15/15)
Canada Joins TMview and Designview
The Canadian Intellectual Property Office has made Canadian trademark and industrial design data available to the Office for Harmonization in the Internal Market (OHIM), TMview and Designview search tools.
Source: www.ic.gc.ca
Sep 29, 2015 (Newsletter Issue 15/15)
China and the USA Join Designview
As of September 14, 2015, the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO) have made their industrial design data available to the Designview search tool.
Source: www.tmdn.org
Sep 29, 2015 (Newsletter Issue 15/15)
ASEAN Designview Officially Launched
ASEAN Designview have been officially launched on August 25, 2015 in Singapore.
Designview contains more than 100,000 design registrations having effects in the participating ASEAN countries. These are Brunei Darussalam, Cambodia, Lao PDR, Malaysia, Philippines, Singapore, Thailand and Vietnam.
Source: www.tmdn.org
Sep 15, 2015 (Newsletter Issue 14/15)
UK Joins Designview
From August 10, 2015, users will be able to search UK design applications in Designview.
Source: www.tmdn.org
Sep 02, 2015 (Newsletter Issue 13/15)
Macedonia Joins TMview
As of July 27, 2015, the State Office of Industrial Property of the former Yugoslav Republic of Macedonia (FYROM) (SOIP) has made its trade mark data available to the TMview search tool.
Source: www.tmview.org
Sep 02, 2015 (Newsletter Issue 13/15)Updated Guidelines Enter into Force On August 1, 2015, the second set of the updated OHIM Guidelines entered into force, following their adoption by the President of the Office on July 8, 2015 (Decision EX-15-2).
The corresponding documents are available on the website’s Current trade mark practice page and the Current designs practice page.
The texts can be accessed in English, French, German, Italian or Spanish under a clean version or under a track-changed version.
On September 9, 2015, a webinar on the new Guidelines will be broadcast live.
The OHIM Guidelines are the main point of reference for users of the Community trade mark system and professional advisers who want to make sure they have the latest information on OHIM’s examination practices. However, it needs to be noted that the guidelines are not binding.
Source: Alicante News, July 2015 and www.oami.europa.eu Jul 28, 2015 (Newsletter Issue 12/15)Report on Protection and Enforcement in Key Third Countries.The European Commission has published its biennial report on protection and enforcement of intellectual property rights (IPR) in key third countries.
The report is part of the European Commission's Strategy for the Enforcement of Intellectual Property Rights in Third Countries. It is largely based on an EU survey on the protection and enforcement of IPR throughout the world, carried out by the Office for Harmonization in the Internal Market, and will help the Commission to update its list of ‘priority countries' on which to focus its activities and efforts for improving protection and enforcement of IPR. It will also benefit third country authorities' understanding of the perception of EU users of their IPR systems, particularly in regard to potential areas for improvement.
Despite positive developments and comprehensive legal reforms, enforcement initiatives and the creation of specialised IP Courts, two thirds of goods detained in 2013 at EU borders due to suspected IPR-infringement originated in mainland China. China therefore retains its status as a priority country. The EU has, however, over the years developed close cooperation with China on IP matters and recently signed a Memorandum of Understanding to reinforce this cooperation.
India also remains a big concern for the Commission, in particular its lack of effective patent protection. The report also highlights a general worsening of IPR protection and enforcement in Argentina, Russia and Ecuador compared to the last report in 2013. Accordingly, the Commission has moved these countries up its priority list.
Compared to the situation in 2013, the report identifies notable improvements in Israel and the Philippines. Israel has improved its protection of pharmaceutical products, while the Philippines have taken significant steps to improve the IPR environment, particularly in legislation and enforcement.
The report provides valuable information for EU rights' holders on the effectiveness of IPR regimes in countries outside the EU. It will also enable right holders – in particular small and medium-sized firms – to improve their business strategies and operations to protect their corporate value in intangibles based on intellectual property they own. In particular, they will be able to better manage risk around their IPR when doing business in or with certain third countries.
Click here to see the full report.
Source: European Commission, www.trade.ec.europa.eu Jul 28, 2015 (Newsletter Issue 12/15)
Payment Platform in 23 EU Languages Available
On 24 January 2015 OHIM switched to ‘Comercia Global Payments', a new banking service provider managed by La Caixa, for all credit and debit card payments. The payment platform, initially only available in the five Office languages (English, French, German, Italian and Spanish), is now ready for use in the remaining 18 languages of the European Union.
The full multilingual spectrum means that the system recognises and automatically redirects users to the payment screen in the language set by their browser.
Source: www.oami.europa.eu
Jul 28, 2015 (Newsletter Issue 12/15)New Guidelines for Examination CTMs and Registered Community DesignsOn July 8, 2015, the President of OHIM has signed the Decision adopting the second part of the revised Office Guidelines, which received a favourable opinion from OHIM´s Administrative Board in May. They will enter into force on August 1, 2015.
The new Guidelines will be available on the OHIM website a few days before they enter into force. They are currently available in PDF form, along with the Decision, here. They are accessible to all users – currently in the 5 languages of OHIM.
The Guidelines have been thoroughly updated with case law from the Court of Justice of the EU, the case law of OHIM's Boards of Appeal, and the outcome of the Convergence Programmes. The revision of the Guidelines will increase consistency and predictability for users, and is aligned with the goals of OHIM's Strategic Plan.
Source: www.oami.europa.eu Jul 14, 2015 (Newsletter Issue 11/15)
Serbia Joined TMview
As of July 6, 2015, the Serbian Intellectual Property Office (IPORS) has made its trade mark data available to the TMview search tool.
Source: www.oami.europa.eu
Jun 30, 2015 (Newsletter Issue 10/15)
Poland and Latvia Implement Back Office
The Polish Patent Office (PPO) has gone live with the Back Office for trade marks and designs, developed by the Cooperation Fund. The Patent Office of the Republic of Latvia (LRPV) has also begun to manage its national and international trade marks with the Back Office system.
The Back Office system supports the management of the entire trademarks and designs lifecycle by IP Offices, including Registration; Opposition/Cancellation/Invalidity; Recordals; Appeals; International Registration and International Application (trade marks only).
Source: www.tmdn.org
Jun 16, 2015 (Newsletter Issue 9/15)Agreement Concerning Trademark Reform ReachedOn April 21, 2015, the European Parliament and European Council reached an agreement with the European Commission during an inter-institutional discussion on the trade mark reform package.
The new legal framework is aimed at encouraging innovation and economic growth by making trademark registration systems all over the European Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal certainty.
It will also improve cooperation between the Office for Harmonization in the Internal Market (OHIM), which is responsible for registering and administering trade marks at European Union level, and the national offices.
Under the agreement, a number of political principles will be incorporated in the new system, including:
- a new structure with a reduced level of fees to be paid by applicants and proprietors of trademarks; such a reduction is justified by the need to render the system more accessible to users and to balance OHIM's budget, which has been producing considerable budgetary surpluses over the years;
- the setting up of an offsetting mechanism to cover expenses incurred by national industrial property offices resulting from the handling of procedures involving EU trade marks. 5% of the OHIM annual revenue is foreseen for the offsetting mechanism, with the possibility of increasing this amount by another 5% in case of a substantive budgetary surplus;
- closer cooperation between national offices and the OHIM in projects to promote convergence of practices and tools in the field of trademarks and designs. The maximum amount of funding for cooperation projects is set at 15% of the yearly revenue of the OHIM;
- the improvement of the governance structure and the establishment of sound financial procedures in the OHIM;
- the renaming of the OHIM to "European Union Intellectual Property Office";
- the implementation of efficient and expeditious administrative procedures by the national offices for revocation or declaration of invalidity of trademarks;
- the adaptation of the designation and classification of goods and services to comply with recent EU case law, in conformity with the international classification established by the Nice agreement.
For more information, please access the EU Commission press release here and the EU Council press release here
Source: www.europa.eu and www.consilium.europa.eu Jun 16, 2015 (Newsletter Issue 9/15)
Tunisia Joined TMclass
As of May 15, 2015, the Tunisian IP Office Institut National de la Normalisation et de la Propriété Industrielle (INNORPI) joined TMclass.
Source: www.tmdn.org
May 27, 2015 (Newsletter Issue 8/15)
Iceland Joined DesignView
As of 18 May 2015, the Icelandic Patent Office (ELS - IPO) has made their design data available to the DesignView search tool.
Source: www.tmdn.org
May 27, 2015 (Newsletter Issue 8/15)
Italy Implements Similarity Tool
The Italian IP Office, Ufficio Italiano Brevetti e Marchi (UIBM), implemented the Similarity project on April 21, 2015.
The implementation work began in the framework of a two day workshop that took place at the UIBM headquarters in Rome, at which OHIM and UIBM experts validated 6,800 pairs of goods and services. One week later, 11,000 terms were validated and as a consequence, the project is considered to be implemented.
The Similarity tool, developed by the Cooperation Fund, gathers and shows assessments from the participating IP offices on similarities between goods and services
www.tmdn.org
May 27, 2015 (Newsletter Issue 8/15)
Several Balkan Countries Joined TMclass
As of April 20, 2015, the IP Offices of the Intellectual Property Office of the Republic of Serbia (IPORS), the Institute for Intellectual Property of Bosnia and Herzegovina (IIP BIH) and the State Office of Industrial Property (SOIP) of the former Yugoslav Republic of Macedonia (FYROM), have joined TMclass.
TMclass now offers users the opportunity to search and translate terms to and from any of the 34 available languages, including Serbian Cyrillic, Bosnian and Macedonian.
Source: www.oami.europa.eu
Apr 15, 2015 (Newsletter Issue 6/15)
Sweden Implemented Similarity Tool
The Swedish Patent and Registration office (PRV) has recently implemented the Similarity tool , developed within the framework of the Cooperation Fund. With this implementation, 15 national and regional IP offices across the ETMDN are now using similarity.
Similarity is a common database of comparisons of goods and services that allows users to assess whether given goods or services are considered similar or dissimilar – and to what degree – according to the practice of the participating IP offices. Similarity benefits users by bringing more transparency to the decision-taking process of EU national offices and OHIM. Similarity also improves the predictability of opposition decisions.
Source: www.tmdn.org
Mar 31, 2015 (Newsletter Issue 5/15)
The Philippines Joined TMview
As of 23 March 2015, the Intellectual Property Office of the Philippines (IPOPHIL) has made its trade mark data available to the TMview search tool.
IPOPHIL first joined ASEAN TMview which was developed by the Intellectual Property Offices of the ASEAN Member States with the support of the EU-ASEAN Project on the Protection of Intellectual Property Rights (ECAP III Phase II) administered by OHIM.
Source: www.tmdn.org
Mar 18, 2015 (Newsletter Issue 4/15)
Hungary Joined DesignView
The Hungarian Intellectual Property Office (HIPO) has joined DesignView and 13,000 Hungarian designs have been added.
The Hungarian Office has also implemented the Common Examiner Support Tool (CESTO), which provides a harmonised search of key databases to support examiners.
Source: www.oami.europa.eu
Feb 25, 2015 (Newsletter Issue 3/15)
Harmonised Database with Nice 10.15 Updated
The Nice committee of experts conclude on the insertion, change and deletion of terms with regards to the Nice classification content.
The changes to the Nice Classification agreed along 2014 were introduced in the Harmonised Database in January 2015 in all EU languages with the collaboration of all National Offices and BOIP.
Source: www.oami.europa.eu
Feb 25, 2015 (Newsletter Issue 3/15)Updated Guidelines Enter into Force On February 1, 2015, the first set of OHIM´s updated guidelines entered into force, following their adoption by the President of the Office on December 4, 2014 (Decision EX-14-4).
The corresponding documents are available under the current trade mark practice page and the current designs practice page of the website.
The texts can be accessed in English, French, German, Italian or Spanish under a clean version or under a version with track changes. With the latter, the user can clearly distinguish the changes that have been implemented since the version adopted last year by the President.
The changes in the guidelines have been summarized in the last edition of Alicante News. An overview of the modifications the Office has implemented can be seen here
The update of the second work package of the guidelines is set to deliver results around mid-2015; therefore the full cycle of revision will be completed by then.
Source: www.oami.europa.eu Feb 25, 2015 (Newsletter Issue 3/15)
Russia Joined DesignView
As of December 8, 2014, the Russian Patent Office has made its industrial design data available to the Designview search tool, adding information on more than 55 000 Russian industrial designs to the system. Moreover, as of the same date the Russian interface of the tool has become available.
Source: Mikhailyuk, Sorokolat & Partners, Ukraine
Jan 28, 2015 (Newsletter Issue 2/15)
OAPI Joined TMclass
The African Intellectual Property Organization (OAPI) has joined TMclass on January 15, 2015.
OAPI represents 17 African Member States: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.
OAPI registers trademarks in both French and English.
Source: www.tmdn.org
Jan 13, 2015 (Newsletter Issue 1/15)
Several Countries Joined DesignView
As of December 8, 2014, the Danish Patent and Trademark Office (DKPTO), the Mexican Institute of Industrial Property (IMPI), the Moroccan Industrial and Commercial Property Office (OMPIC), the Norwegian Industrial Property Office (NIPO) and the Federal Service for Intellectual Property of Russia (Rospatent) have made their design data available to the Designview search tool.
The Austrian Patent Office (ÖPA) has made its design data available to the DesignView search tool as of December 9, 2014.
Additional to that the Korean Intellectual Property Office (KIPO) and the Irish Patents Office (IPO) are new members of DesignView, the registered designs search tool, after making their design data available as of December 15, 2014.
Source: www.tmdn.org
Dec 09, 2014 (Newsletter Issue 19/14)
Iceland Joined TMview
As of 24 November 2014, the Icelandic Patent Office (ELS - IPO) has made its trade mark data available to the TMview search tool.
Source: www.tmdn.org
Dec 09, 2014 (Newsletter Issue 19/14)
Montenegro Joins TMclass
On 20 October 2014, the Intellectual Property Office of Montenegro joined TMclass, a joint project between the Office for Harmonization in the Internal Market (OHIM) and the PTOs of member states.
Source: www.petosevic.com
Nov 25, 2014 (Newsletter Issue 18/14)
Cyprus Joined DesignView
The registered design data of the Patent and Trademark Office in Cyprus has been integrated into DesignView database.
Source: www.tmdn.org
Nov 11, 2014 (Newsletter Issue 17/14)
Payment of Applications in Advance
From 24 November 2014, OHIM will only examine trademark applications and process any mail related to them after they are paid for. This change will enhance the efficiency of the office.
Source: www.oami.europa.eu
Nov 11, 2014 (Newsletter Issue 17/14)
Fast Track Procedure Soon Available
From 24 November 2014, OHIM provides a 'Fast Track' procedure for its users free of charge. The trademark application will be published in half the time or less, as compared to regular applications with this new procedure.
Further, there are going to be no classification deficiencies any more with the 'Fast Track' procedure. Users have to select their goods and services from a database of terms already accepted by OHIM and by almost all national intellectual property offices of the European Union.
For an application to qualify for, and remain in, 'Fast Track' applicants need to, among other conditions:
- Select the goods and services from OHIM's harmonised database, which contains pre-validated and pre-translated terms.
- Pay at the end of the application process or immediately after submission.
Additionally, the application should not trigger any deficiency finding at the time of submission or during its examination by OHIM staff.
More details will be available soon on OHIM website.
Source: www.oami.europa.eu
Oct 28, 2014 (Newsletter Issue 16/14)
Tunisia Joined TMview
As of 20 October 2014, The Tunisian National Institute for Standardization and Industrial Property (INNORPI) has made its trade mark data available to the TMview search tool.
Source: www.tmdn.org
Oct 28, 2014 (Newsletter Issue 16/14)
Iceland and Montenegro Joined TMclass
As of 20 October 2014, the Icelandic Patent Office (ELS) and the Intellectual Property Office of Montenegro (IPOM) have joined TMclass, the goods and services classification tool.
Source: www.oami.europa.eu
Oct 14, 2014 (Newsletter Issue 15/14)
Finland Joined TMclass
As of 8 September 2014, the Finnish Patent and Registration Office (PRH) is a part of the Common Harmonised Database of Goods and Services for trademark classification. As a result, the Finnish translations of the Harmonised Database set are now available to all users through the TMclass application.
Source: www.prh.fi, www.tmdn.org
Oct 14, 2014 (Newsletter Issue 15/14)Practice of Relative Grounds of Refusal/Likelihood of ConfusionOn 2 October 2014, the IP offices implementing the Common Practice have published on their respective websites a Common Communication detailing the Common Practice of the 25 EU and three non-EU implementing offices.
To arrive at a Common Practice, participating offices closely analysed and converged regarding non-distinctive/weak components of marks for the purpose of assessing likelihood of confusion, assuming that the good and/or services are identical, in particular:
- Define what marks are subject to assessment of distinctiveness
- Determine the criteria to assess the distinctiveness of the mark
- Determine the impact on Likelihood of confusion when the common components have a low degree of distinctiveness
- Determine the impact on Likelihood of confusion when the common components have no distinctiveness
The details of the Common Practice can be found in the Common Communication document of the CP5 section in the Convergence area of this website.
Source: www.tmdn.org Sep 16, 2014 (Newsletter Issue 14/14)
ASEAN TMview Launched
The new ASEAN online trademark information tool, ASEAN TMview, has officially been launched on 26 August 2014 in Singapore.
ASEAN TMview contains more than 2.2 million trademark applications and registrations of the participating ASEAN countries like Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore and Thailand.
The ASEAN TMview interface is currently available in five languages: English, Bahasa Indonesia, Khmer, Lao and Thai.
Source: www.tmdn.org
Sep 16, 2014 (Newsletter Issue 14/14)Change in Examination of International Registrations Designated in EUOHIM announced on its website that the office will begin examining the classification of international registrations designated in the European Union (EU), for vague terms as and from 1 October 2014.
This change brings OHIM's practice into line with that of EU national and regional IP offices, as previously outlined in the Common Communication on the implemetation of IP Translator.
On 19 June 2012 the Court delivered its ruling in Case C-307/10 "IP Translator" in which it stated that applicants seeking protection of a trade mark must identify the goods and services for which the trade mark is to be protected with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
In order to align the practice of International Registrations designating the EU with direct filing CTMs, the Office has decided to use the possibility, under Article 4(1)b of the Madrid Protocol, of objecting to terms it considers too broad or too vague, and that lack clarity and precision.
For more information, please click here.
Source: www.oami.europa.eu Sep 02, 2014 (Newsletter Issue 13/14)
Canada and Norway Joined TMclass
OHIM has announced the integration of CIPO – OPIC (Canadian Intellectual Property Office / Office de la propriété intellectuelle du Canada) and NIPO ( Patentstyret, Norwegian Industrial Property Office ) into TMclass.
Source: www.oami.europa.eu
Jun 24, 2014 (Newsletter Issue 10/14)New Office GuidelinesThe President of OHIM has signed the Decision implementing the new Office Guidelines.
The first part of the new Guidelines came into force in February 2014. Until 31 July 2014, the current Manual of Office Practice and the first part of the new Guidelines will be in effect. After 1 August 2014, both parts of the Guidelines will form the Office's practice.
The new Guidelines will be available on the current practice page of the OHIM website in July. They are currently available in PDF form, along with the Decision, here.
The Guidelines have been thoroughly updated with case law from the Court of Justice of the EU, the case law of OHIM's Boards of Appeal, and the outcome of the Convergence Programmes.
Source: www.oami.europa.eu Jun 24, 2014 (Newsletter Issue 10/14)
TMview Now Available in Arabic
The graphical user interface (GUI) of TMview is now available in Arabic.
Source: www.tmdn.org
Jun 10, 2014 (Newsletter Issue 9/14)
Italy Joined DesignView
The registered design data of the Italian Patent and Trademark Office has been integrated into DesignView database. Approximately 300,000 Italian designs are available in DesignView.
Source: www.tmdn.org
Jun 10, 2014 (Newsletter Issue 9/14)
Denmark and Romania Joined TMClass
The Danish Patent and Trademark Office (DKPTO) and the State Office for Inventions and Trademarks of Romania (OSIM) have joined the Harmonised Database of Goods and Services.
Source: www.tmdn.org
May 16, 2014 (Newsletter Issue 8/14)New Common Practice on Black & White MarksOHIM and the participating national offices have issued a Common Communication for trademarks registered in black and white.
Under the new Common Practice, a black & white (or greyscale) mark will only be considered identical to a sign in colour where the differences between the signs are so insignificant that they will go unnoticed by the average consumer. An insignificant difference will be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.
This change of practice will have consequences for, use, oppositions and priority claims. The practice does not affect infringement issues, use of black and white marks in colour for the purposes of acquired distinctiveness, the assessment of similarities between colours, and colour marks per se.
OHIM will publish the implementation of the Common Practice in its Guidelines on 2 June 2014. The practice will enter into force immediately after publication.
Please note that there is some divergence between the various offices as to whether the new Common Practice applies to pending applications or only applications filed after the relevant implementation date, and also as to whether it applies to pending proceedings or only proceedings filed after the implementation date.
Further, Sweden, Denmark and Norway have been constrained from participating in the new Common Practice because of their national laws. The Common Communication confirms that Italy, France and Finland have also decided not to implement the Common Practice.
Source: www.oami.europa.eu and King & Wood Mallesons, United Kingdom Apr 01, 2014 (Newsletter Issue 6/14)
China Joined TMView
The Trademark Office of The State Administration for Industry & Commerce of the People's Republic of China (SAIC) has joined TMclass.
Source: www.tmdn.org
Apr 01, 2014 (Newsletter Issue 6/14)
Romania Joined DesignView
The registered designs data of the State Office for Inventions and Trademarks of Romania (OSIM) has been integrated into the DesignView database. Approximately 41,000 Romanian designs are available in DesignView.
Source: www.tmdn.org
Mar 18, 2014 (Newsletter Issue 5/14)Communication on Acceptability of Classification TermsThe publication of the IP Translator judgment in June 2012, led EU IP offices and OHIM to develop efforts to accomplish convergence regarding classification of goods and services.
In this context, a third Common Communication has been published on 20 February 2014, containing guidelines to identify in which cases a term is sufficiently clear and precise in order to be included in a trademark application.
The European Trade Mark and Design Network had already issued two Common Communications, respectively concerning the interpretation of the IP Translator judgment and the 11 general indications considered insufficiently clear and precise, documents in which minor changes were meanwhile introduced and whose updated versions can be found here and here.
Source: www.marcasepatentes.pt Mar 04, 2014 (Newsletter Issue 4/14)
South Korea Joined TMView
As of 12 February 2014, The Korean Intellectual Property Office (KIPO) has made its trademark data available to the TMview search tool.
Source: www.tmdn.org
Jan 21, 2014 (Newsletter Issue 1/14)
Russia and U.S. Joined TMView
As of 18 December 2013, the Federal Service for Intellectual Property of Russia (Rospatent) and the United States Patent and Trademark Office (USPTO) have made their trade mark data available to the TMview search tool.
Source: www.tmview.europa.eu
Nov 18, 2013 (Newsletter Issue 16/13)
Developments on TMview and TMclass
As of 11 November 2013, the Greek Ministry for Development and Competiveness (GGE) and the Moroccan Industrial and Commercial Property Office (OMPIC) have made their trade mark data available to the TMview search tool. This last extension brings the total number of offices participating in TMview to 32.
As of 12 November 2013, the German Patent and Trade Mark Office (DPMA) is a part of the Common Harmonised Database of Goods and Services for trade mark classification. As a result, the German translations of Harmonised Database set is now available through TMclass application.
Source: www.oami.europa.eu
Nov 15, 2013 (Newsletter Issue 16/13)Practice Manual on Classification AmendedThe Office for Harmonisation in the Internal Market (OHIM) has amended its 'Manual of Trade Mark Practice'. The Manual concerns examination on classification of goods and services and will enter into force on 25 November 2013.
The Manual can be accessed here. Changes are marked in blue.
Source: www.oami.europa.eu Oct 15, 2013 (Newsletter Issue 15/13)Update on Guidelines of TM and Design PracticeOHIM announced on its website that the office is currently in the process of updating its Manuals on trade mark and design practice and transforming them into Guidelines – a unique source of reference for the Office’s practice that will be available in all official EU languages.
The aim is to balance the work evenly over the course of the year. Therefore, the various parts and sections of the Manual on trade mark and design practice have been divided into two working packages, Work Package 1 (WP1) and Work Package 2 (WP2). WP1 is currently in phase three, awaiting consultation at the next meeting of OHIM’s Administrative Board, including feedback from user associations and IP offices received until then. WP2 has been launched on July 1, 2013.
For more information, please check here
Source: www.oami.europa.eu Oct 11, 2013 (Newsletter Issue 15/13)
Spain Implements Similarity
The Spanish office has implemented the Similarity tool.
This latest implementation brings the total number of offices using Similarity to eight, including OHIM. Similarity is a search tool which allows users to assess whether given Goods and Services are considered similar, and to what degree, or dissimilar according to the participating IP Offices
Source: www.oami.europa.eu
Oct 01, 2013 (Newsletter Issue 14/13)
France Joins Seniority
The French Intellectual Property Office has successfully implemented the Seniority Project. The project enables the harmonisation of seniority information among national IP offices in the EU.
Source: www.oami.europa.eu
Sep 17, 2013 (Newsletter Issue 13/13)
Turkey Joins TMview
Since 02 September 2013 the Turkish Patent Institute has made its trade mark data available to the TMview search tool.
This last extension brings the total number of offices participating in TMview to 30.
Source: www.tmview.europa.eu
Sep 17, 2013 (Newsletter Issue 13/13)Timetable of Public Holidays 2014 OHIM has published Decision ADM-13-46 relating to the timetable of public holidays for the year 2014. On the dates indicated in the Decision, the Office will not be open for the reception of documents, and any deadlines affected will be extended to the next working day.
The timetable of public holidays for the year 2014 can be seen here
Source: www.oami.europa.eu Jul 16, 2013 (Newsletter Issue 11/13)Croatia, Cyprus, Mexico, and Norway Join TMviewOn 1 July 2013, Croatia, Cyprus, Mexico and Norway made their trade mark data available on TMView, bringing the number of offices participating in TMview to 29 and providing access to approximately 11m trade marks.
TMView is the result of the International Cooperation and Cooperation Fund programmes managed by OHIM in collaboration with its EU and international partners.
TMclass is available online here
Source: www.ipo.gov.uk and www.oami.europa.eu Jun 14, 2013 (Newsletter Issue 9/13)Croatia Integrated into Harmonisation Project The Croatian version of the Common Harmonised Database on Classification of Goods and Services is now available to all users through the TMclass application.
This is the latest expansion in the Harmonisation Project for Goods and Services, which has been expanding continuously since it was set up. The integration of the national trademark office of the Republic of Croatia (SIPO) into the "Harmonisation community" is another step forward for the database; as it grows, it creates further benefits for European users by improving predictability.
TMclass is available for free, online to all users here
Source: www.oami.europa.eu Jun 04, 2013 (Newsletter Issue 8/13)Class Headings Breakthrough AnnouncedOHIM announced a major breakthrough in the Convergence Programme initiative on the Nice Class Headings Individual Terms.
This effort came about through the interest of national offices, BOIP and OHIM taking a harmonised approach in addressing the Court of Justice ruling in Case C-307/10 “IP Translator” that deemed certain general indications insufficiently clear and imprecise for classification, but did not specify which were classifiable and which were not.
In under a year, an agreement was reached which will result in the creation and publication of a Common Communication on the web sites of all participating offices envisaged by the end of this year. This communication will clearly outline the initiative results and its influence on EU IP practices, as well as when and by whom this common practice will be implemented. This implementation by the EU IP Offices will happen on a voluntary basis.
Please find an overview on how each Trademark Office of the European Union deals currently with trademarks filed before and after the "IP Translator" Judgement as well as more information on how each Office refects and interprets the matter here
Source: www.oami.europa.eu May 21, 2013 (Newsletter Issue 7/13)
KIPO Joins TMclass
The Korean Intellectual Property Office (KIPO) has become the latest office to join TMclass.
TMclass is an online tool based on the Nice Classification system, that helps users correctly classify goods and services when filing a trade mark. Next to KIPO´s database, it also offers access to the databases of EU national IP offices and other major IP offices, including the United States Patent and Trade mark Office (USPTO), the Japan Patent Office (JPO) and the Swiss Federal Institute of Intellectual Property (IPI).
It allows users to search for terms in any of the 25 languages available – 22 EU languages, plus Croatian, as well as Japanese and Korean.
Source: www.oami.europa.eu
May 17, 2013 (Newsletter Issue 7/13)Manual of Trade Mark Practice AmendedThe Manual of Trade Mark Practice on Proof of Use has been modified by the Office of Harmonization for the Internal Market (OHIM) to align it with the judgment of the Court of Justice in C-149/11 ‘Leno Merken’.
The revision affects Section II.4.1- Use on the "domestic" market and Section II.4.2 - CTMs: use in the European Union. For further information, please access the manual here
The amendments came into force on 2 May 2013.
Source: www.marques.org May 17, 2013 (Newsletter Issue 7/13)
Malta Joins Seniority
Malta has become the 14th EU National Office to implement the Seniority Project. The Maltese office joins Lithuania, Estonia, Latvia, Sweden, the Slovak Republic, Bulgaria, Benelux, Slovenia, Ireland, Hungary, Portugal, the Czech Republic and Romania in implementation.
Having accurate seniority data is important for Community trade mark owners who have previously registered an identical mark in an EU member state which has been surrendered or allowed to lapse. The project, a part of OHIM´s Cooperation Fund, involves establishing links between entries in the national and Community databases and making the information accessible online.
Source: www.oami.europa.eu
Apr 15, 2013 (Newsletter Issue 5/13)CTM Reform Proposals AvailableThe Commission adopted proposals for a revision of the Regulation on the Community trade mark and for a recast of the Directive approximating the laws of the Member States relating to trade marks. The package of initiatives aims at upgrading, streamlining and modernising the current legislation in order to make the trade mark registration systems all over the Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security.
For more information, please click here
Source: www.ec.europa.eu Apr 15, 2013 (Newsletter Issue 5/13)Euroclass Becomes TMClassOHIM has announced that Euroclass has been rebranded to be called TMclass to external website on 18 March 2013. Subsequent to the successful integration of USPTO and JPO, EuroClass will soon include the Korean classification database, further solidifying its importance as a global IP resource. It is this global expansion that has led to the decision to rebrand.
For more information, please click here
Source: www.oami.europa.eu, www.ecta.org Jan 18, 2013 (Newsletter Issue 1/13)
Manual on Trademark Practice for Collective Marks Changed
The Manual of Trademark Practice for collective marks focusses on the particularities which affect this type of mark in comparison to individual ones. It was changed recently, in order to reflect some recent decisions of the Board of Appeal.
The new version allows any legal person governed by public law to become an owner of a CCTM.
Before that ownership of collective CTMs was limited to (i) associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law. The definition of the first type of owners did not present difficulties. As regards the legal persons governed by public law, the former Manual required that they must have members who have the right to influence the regulations of use of the mark. Under the former practice, ‘Consejos Reguladores’ could be owners, but not individual municipalities. This had created some difficulties and controversial opinions.
Source: www. oami.europa.eu
Jan 18, 2013 (Newsletter Issue 1/13)
Ireland and Poland Joined TMview
Trade marks from the Irish Patent Office and the Polish Patent Office have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.
Source: www.tmview.europa.eu
Jan 18, 2013 (Newsletter Issue 1/13)
Finland Goes Live with TM E-Filing
On 30 November 2012, the tenth new tool released under the Cooperation Fund, TM e-filing, went on a restricted go-live to local users in Finland.
The Finnish office are the first to run the e-filing tool, which OHIM will also use once it is incorporated into the Office´s new website, due for launch in April 2013.
Source: www.oami.europe.eu
Nov 19, 2012 (Newsletter Issue 17/12)
Austria and Germany Joined TMView
Trade marks from the Austrian Patent Office and the German Patent and Trade Mark Office have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.
The latest expansion brings the total number of offices which have made their trade mark data available to TMview to 23. Besides Austria and Germany these are: Bulgaria, Benelux, Czech Republic, Denmark, Estonia, Finland, France, Hungary, Italy, Latvia, Lithuania, Malta, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, the UK, WIPO and OHIM. With the addition of about 184.000 Austrian trade marks and more than 1,6m German trade marks, TMview now provides access to more than 9,1m trade marks in total.
Source: www.tmview.europa.eu
Nov 01, 2012 (Newsletter Issue 16/12)
Malta Joined TMview
Trade marks from the National IP Office of Malta, Commerce Department have now been added to the TMview search tool which provides free access to trade mark applications and registrations from a number of leading trade mark offices.
The latest expansion brings the total number of offices which have made their trade mark data available to TMview to 21. Besides Malta these are: Bulgaria, Benelux, Czech Republic, Denmark, Estonia, Finland, France, Hungary, Italy, Latvia, Lithuania, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, the UK, WIPO and OHIM. With the addition of about 50.000 Maltese trade marks, TMview now provides access to almost 7,3m trade marks in total.
Source: www.tmview.europa.eu
Nov 01, 2012 (Newsletter Issue 16/12)Extension of Time LimitOHIM extends the time limit for the affected parties of the Hurricane "Sandy". All time limits that were to expire between 28 October 2012 and 11 November 2012 are extended until 11 December 2012.
For more information, please click here
Source: www.oami.europe.eu Jul 17, 2012 (Newsletter Issue 11/12)
Change in Practice on Use of Class Headings
The Community Trademarks Office OHIM has decided to change their practice on the use of class headings in lists of goods after the decision from the European Court of Justice in the "IP Translator" case.
The decision states that:
The specifications of goods should be expressed with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark.
It is not precluded to use the general indications of the class headings of the Nice classification of goods and services.
An applicant who uses class heading for identifying the goods/services for which protection is sought, must specify whether the application is intended to cover all goods or services of the relevant class or only some of the goods/services.
- For Community trade marks registered before 21 June 2012 which use all the general indications listed in the class heading of a particular class, OHIM will consider that the intention of the applicant was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.
- For Community trade mark applications filed before 21 June 2012 and which are still not registered, OHIM considers that the intention was to cover all the goods or services included in the alphabetical list of the particular class concerned, unless the applicants specify that they had sought protection only in respect of some of those goods or services in that class.
- For Community trade mark applications filed after 21 June 2012, the applicants must expressly indicate whether or not the intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class
Source: Zacco AS, Norway
Jul 17, 2012 (Newsletter Issue 11/12)
Hungary joins TMview
More than 115,000 trademark from the Hungarian Intellectual Property Office have been made available to the TMview search tool.
Source: www.tmview.europa.eu
May 15, 2012 (Newsletter Issue 8/12)Trade Mark Practice ChangedOHIM has amended the General Provisions in the Manual of Trade Mark Practice with effect from May 1, 2012.
For further information, please access the amendments of the General Provisions here
Source: www.oami.europe.eu
Apr 17, 2012 (Newsletter Issue 6/12)
New Practice of Opposition Proceedings
OHIM has changed its practice in opposition proceedings when notifying the opposition to the applicant.
As from the April 1, 2012, in oppositions based on earlier CTMs, OHIM will no longer send the applicant the corresponding CTM-online extract attached to the Offices’ letters but will add a link to the CTM Online database along with the following text:
“Where the opposition is based on Community trade marks please access the relevant information via CTM-ONLINE on the Office’s Internet site (http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do).”
This would allow the applicants to download information about the earlier CTMs and will spare the parties precious time. The change of practice will apply to all applicants.
The Manual on Trade Mark Practice has been amended to reflect the above and the new text now reads as follows (The Manual Concerning Opposition, Part 1: Procedural Matters, Page 8):
“The applicant immediately receives a copy of the notice of opposition (and of any document submitted by the opposing party) for information. In case the opposition is based on a Community trade mark, he is also informed that he can access any information about earlier Community trade marks via CTM-ONLINE, which is available on the Office’s Internet site”.
Source: www.oami.europa.eu
Mar 06, 2012 (Newsletter Issue 4/12)
Further Countries Joined TM View
The Office for Harmonization in the Internal Market (OHIM)
provides the second version of TMView which offers new features to improve the user experience, including additional searching and filtering options. It has also expanded to include trade marks from the offices of Lithuania, Romania and Sweden. With this addition TMView now provides access to close to seven million trade marks from the seventeen participating offices. TMview allows users to search databases for existing trade marks held in major Intellectual Property Offices.
Source: www.oami.europa.eu
Feb 07, 2012 (Newsletter Issue 2/12)Classification Manual IncorporatedOHIM announced that the Knowledge Circle “Goods and Services Issues” has incorporated the Classifcation Manual in the Examination Manual as part B.3., which entered into force on February 1, 2012.
The document reflects the current practice of the Office and has also been brought in line with the 10th edition of the Nice Classification.
For more information, please click here.
Source: www.oami.europa.eu Jan 23, 2012 (Newsletter Issue 1/12)Croatia to Join the EUCroatia applied for the European Union membership and signed the Accession Treaty on December 9, 2011 to become a member. Subject to the Treaty's ratification by all Member States and Croatia, the country will become the 28th Member State of the European Union on July 1, 2013. A referendum on the EU accession was held in Croatia on 22 January 2012. It passed with more than 60 percent votes cast in support of the accession.
Croatia’s membership of the European Union brings with it implications for the Community trade mark and designs systems and the Treaty outlines that all CTMs and RCDs registered in Member States before the date of accession shall be extended to the territory of Croatia on the day of accession.
For more information please click here Dec 01, 2011 (Newsletter Issue 14/11)Adoption of 10th Edition of Nice ClassificationOHIM has announced that it will apply the 10th Edition of the Nice Classification as from 1 January 2012 for all Community trademark applications. Pending CTM applications or already registered CTMs with a filing date prior to 1 January 2012 will not be reclassified, even at the request of the CTM applicant or proprietor, nor will reclassification be allowed at the time of renewals of the CTM registration.
For more information, please click here
Source: www.oami.europa.eu Nov 08, 2011 (Newsletter Issue 13/11)Mediation Service AvailableOHIM has launched a mediation service in inter partes proceedings, following the decision of the first instance and in parallel to appeal proceedings (which shall then be suspended, when appropriate), allowing the parties to reach an amicable settlement without the requirement of a decision from the Boards on the substance.
Mediation talks will normally be held in Alicante and the service itself is offered free of charge. However, in order to avoid the contested decision becoming final, the party being adversely affected by the decision must, within the two months following the notification of the contested decision, file an appeal and pay the appeal fee of EUR 800. A one-off fee of EUR 750 is charged in the event that the parties wish to hold the mediation talks in Brussels in order to cover the traveling expenses of the mediator.
It is the role of the mediator to bring the parties together and assist them in finding common ground on which a potential settlement may be made, but not to act as judge nor to offer opinions on the rights and wrongs of each party’s arguments.
Detailed documentation on all aspects of the mediation can be accessed hereSource: www.oami.europa.eu Oct 01, 2011 (Newsletter Issue 11/11)
Mediation Service on the Way
OHIM is planning to introduce a mediation service as an alternative to proceeding with an appeal the the Boards of Appeal in trademark and design cases. The Service will be available from the end of October through the team of specially-trained mediators drawn from the Office's staff.
To qualify for the new service, an appeal must already have been filed (with payment of the normal appeal fee of EUR 800). If the mediation meetings take place at OHIM's premises in Aliante there is no further fee to pay. As an alternative, provision has been made for mediation to be offered at OHIM's Brussels office on payment of a fixed fee of EUR 750 to help defray the mediator's travel expenses.
The process of mediation is not binding on the parties but is expected to lead to the settlement of the appeal prcedure and to binding contracts between the parties in many cases. The altermative is to proceed with an appeal, which takes an average 1.5 years and in some cases is followed by further time consuming and expensive litigation again before the first Instance or at the Court of Justice in Luxembourg.
Source: www.oami.europa.eu
Jun 07, 2011 (Newsletter Issue 8/11)
Electronic Certified Copies not Always Accepted
In May 2011, OHIM introduced a new online service allowing users to obtain automatically generated certified copies of application requests and CTM registration certificates from the CTM-ONLINE database.
However, it turned out, that the electronic certified copies are accepted in many European countries but they are not accepted in many other territories such as Canada, Hong Kong, India, China, Mexico, Argentina, among others. For those countries, certified copies need to be requested in the original manner by submitting a form and paying a fee.
Source: www.marques.org
May 10, 2011 (Newsletter Issue 7/11)Provision of Certified CopiesThe Office for Harmonization in the Internal Market (OHIM) introduced a new online service allowing users to obtain automatically generated certified copies of application requests and CTM registration certificates from the CTM-ONLINE database.
The service is free of charge. The automatically generated certified copies have the same value as the certified copies sent on paper upon request and can be used either in electronic format or printed.
For more information please click hereSource: www.oami.europa.eu May 03, 2011 (Newsletter Issue 7/11)France Joined TM ViewOHIM informs on its website that France has joined TMview, a search tool providing free access to trademark applications and registrations from several trademark offices. To access TMview please click hereSource: www.oami.europa.eu Mar 15, 2011 (Newsletter Issue 5/11)Forms for Legal Entities ChangedOHIM has changed a number of its downloadable forms to incorporate a section indicating the "legal form" or type of legal entity making the application.
In some countries "legal forms" of entities, such as "Incorporated", "Sociedad Anónima" or "Aktiengesellschaft" are not included in the official name. However, this information must be on the form where applicants are legal entities.
To access the downloadable forms please click here Mar 14, 2011 (Newsletter Issue 5/11)New "eSearch plus" Service LaunchedOHIM has launched a new search service combining the data in ten previous databases. eSearch plus, which is currently in trial or "beta" version, allows the easy searching and monitoring of Community trade marks and registered Community designs, searching for owners, representatives and related case-law.
OHIM announced that the new service offers advanced features including more complete information, sorting and filtering options, and new means of setting up "alerts" delivered via RSS.
All existing services such as CTM Online, RCD Online and the case-law databases will continue to be available for some time. It is planned to phase them out once eSearch plus is on final release.
The current eSearch plus service is in English only. The final version will be made available in all the OHIM languages.
To access eSearch, please click here Mar 01, 2011 (Newsletter Issue 4/11)Online Filing of OppositionsOHIM is providing its users a new online service for filing their Notice of Opposition from March 7th, 2011. In response to user feedback, the new Opposition Online filing has been designed to be both quicker and simpler, offering a number of functionalities which bring it in line with the existing CTM and RCD e-filings tools.
For more information please click here Jan 01, 2011 (Newsletter Issue 1/11)Ireland and Malta Adopt Harmonised Goods & Services ListIreland and Malta adopt harmonised list of goods and services
The Irish and the Maltese Patent Offices have decided to adopt the harmonised list of goods and services for trade marks as drawn up by the UKIPO and OHIM. This is part of a project to create a common list, with approved translations, accepted by participating EU trade mark offices and other international partners.
As a result of their successfully joining the EuroClass project on December 13th, 2010, the content of the harmonised list of goods and services as presented in the EuroClass application will be accepted by the Irish and Maltese office. The decision of both offices is a significant step forward in the EuroClass cooperation project, which compares the goods and services terms used by participating offices. This project is supported by WIPO who act as an arbitrator in the event of any disagreements.
For more information please click here Nov 01, 2010 (Newsletter Issue 16/10)Manual of Trademark Practise AmendedOHIM has amended the Manual of Trademark Practice. To view the amendments please click here Nov 01, 2010 (Newsletter Issue 16/10)New Feature in E-FilingOHIM has announced that the CTM E-Filing has been upgraded to allow applicants using MyPage to opt for an e-mail notification when the CTM application is published. The new feature improves integration with the CTM Watch system, which allows users to monitor the status of selected CTMs. Now, an e-mail notification of publication can be requested directly at the time for application.
For more information please click here Oct 04, 2010 (Newsletter Issue 15/10)New FormsOHIM has published two new forms designed to simplify the process of requesting a change of name or address and altering representative details on OHIM’s databases.
The new forms, “Requesting changes of names and addresses" and "Appointing/deleting/replacing representatives", complement the existing all-purpose "Recordal Application Form", but are both simpler and easier to use.
OHIM advises the use of the new forms for the frequently requested changes indicated in their titles, while the existing all-purpose form continues to be used for other Recordals such as transfers and licences.
For more information please click here Sep 15, 2010 (Newsletter Issue 14/10)Changes in Practise IntroducedOHIM is introducing changes in practice on suspensions and extensions of time, and new guidelines on the presentation of evidence of proof of use in opposition proceedings, effective by September 15th, 2010.
For more information please click here Aug 09, 2010 (Newsletter Issue 13/10)Free Database for Spanish Trademarks Now AvailableSpanish trademarks can be now searched via the free online tool TMview. The tool enables trademark search on various official online database registers.
The inclusion of Spain increases the number of IP offices covered by the joint search tool to nine.
The service already provides free access to trademark data from OHIM and WIPO, as well as the UK, Czech, Italian, Benelux, Portuguese, and Danish Intellectual Property Offices. Data from Estonia, Slovenia, Slovakia, and France will follow later this summer and the aim is for it eventually to cover all 27 EU Member States. The inclusion of 1m Spanish trademark applications and registrations will bring the total number of searchable trademarks within the system up to more than 5m.
To access TMview please click here Jul 12, 2010 (Newsletter Issue 12/10)
New Deadline for Correcting Translations
The Office of Harmonization in the Internal Market (OHIM) has changed the deadline for correcting translations in CTM applications.
OHIM supplies the applicant with a translation of the list of goods and services and other text in the designated second language (DE, EN FR, IT or ES) and has allowed a period of two months in the past for the response for any amendments.
The OHIM has reduced this time limit to one month effective from July 12th, 2010.
Source: www.oami.europa.eu
May 05, 2010 (Newsletter Issue 10/10)Free Internet Searchable Database LaunchedThe Office for Harmonization in the International Market (OHIM) launched on April 13, 2010, TMview, a free online tool that enables trademark searches on various official online database registers.
In the first phase of TMview, the databases of the European trade marks and designs registration office (OHIM), the World Intellectual Property Organization (WIPO) and the UK, Czech, Italian, Benelux, Portuguese, and Danish Intellectual Property Offices are being made available. Later this year, the data from eight other EU Offices is expected to join the project.Source: www.oami.europa.eu May 05, 2010 (Newsletter Issue 10/10)Future Revision of the Trademark SystemThe European Union council published the Draft Council conclusions on the future revision of the Trade Mark system in the European Union on April 15, 2010.
The draft contemplates, among other topics:
1) a specific provision to be introduced to define the framework for cooperation between the Office of Harmonization in the Internal Market (OHIM) and the national offices of Member states
2) the OHIM will ensure harmonization of practice and tools between member countries
3) the OHIM will cooperate with national offices in combating piracy and counterfeiting
4) the creation of a legal foundation for the allocation of funds to the national offices of Member states
For more information please click here Nov 23, 2009 (Newsletter Issue 5/09)
CTM Bulletin Goes Daily
Since Monday 23 November OHIM started to publish Community Trade Mark registrations on a daily basis (Monday-Friday). The B1 section of the Bulletin covering registrations is being published every day from Monday to Friday. In addition the renewals section (D1) is also being published daily when data is available. On days when no renewals are ready for publication, section D1 will be blank. All sections of the Bulletin will continue to be published as before on Mondays.
The move to more frequent publication of parts B1 and D1 of the CTM Bulletin is intended to provide a more up-to-date service for the Office's customers. Once the new service has become established, it will enable the Office to move more smoothly to electronic certificates, which are currently being tested and are due to be introduced during December.
Source: www.oami.europa.eu
European Union Trademarks were introduced on April 1st, 1996, in addition to the national and international registration. On March 23, 2016, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trademark regulation entered into force and contains a number of changes. With a registration at the European Union Intellectual Property Office (EUIPO) (trademarks, patterns, and designs) in Alicante (Spain), the trademark will be protected in all member countries of the European Union. A prior application or registration in the home country of the applicant is not required. In addition, the home country of the applicant does not have to be a member of the European Union either. Owners of national trademarks in the member states of the European Union may file opposition against a trademark applied for as European Union Trademark. Therefore, it is recommended to conduct a search in each member country before applying for a European Union Trademark.
European Union Trademarks are also valid in the following overseas departments: Guadeloupe (GP), Martinique (MQ), French Guyana (GF), Saint Barthélemy (BL), Saint Martin (MF), Réunion (RE), Åland Islands (AX), Madeira, Azores, Ceuta and Melilla and Canary Islands.
Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain and Sweden.
The United Kingdom has now left the European Union and EU trademark applications and registrations no longer cover the UK.
Owners of EU registrations which had been granted protection by 31 December 2020 will have been awarded an equivalent UK registration (same filing/priority/seniority date as the EU registration) as of right, at no additional cost.
However, owners of EU applications which were still pending on 31 December 2020 were not automatically awarded an equivalent UK right. Instead, they had 9 months from that date to file a request for one with the UKIPO, and pay the standard UK trade mark application fees, following which a new UK application (with the same filing/priority/seniority date as the EU application) was created, examined and processed by the UKIPO as a UK application.
Registrable as a trademark is a sign capable to distinguish the goods and services of one organisation from those of another.
Trademarks are words, logos, devices or other distinctive features and they can be represented in any appropriate form as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. They can consist of, for example, the shape of goods, their packaging, colours or combinations of colours, three-dimensional marks, sound marks, multimedia, holograms, position, pattern.
Specific file formats are required by EUIPO when filing a trademark.
The following trademark types are registrable: trademarks, service marks, certification and collective marks.
Applications are filed at the European Union Intellectual Property Office (EUIPO) in Alicante.
Multi-class applications are possible.
An agent is not necessary for applicants who have an office or residence in one of the member countries. Those applicants, who do not have their office or residence within the European Union (EU) or European Economic Area (EEA), must be represented by a professional representative or a legal practitioner entered on the list kept by the Office. The application must be written in any official language of the European Union. Upon filing, the applicant must specify a second language, one of the five languages of EUIPO (English, German, French, Italian or Spanish). This second language can be used as procedural language in case of opposition, limitation, or nullification procedures.
Foreign applicants do not need a domestic registration.
The application process includes an examination on formal, absolute grounds and search for prior trademarks (note to proprietors if expressly requested).
Before the trademark is registered, it will be published in the “EU Trademark Bulletin”.
The average processing time from application to registration is about 7 months (fast track).
A trademark registration is valid for 10 years from the application date and may be renewed for an indefinite amount of further periods each of 10 years.
The official fee for filing a European Union Trademark is EUR 1,000 for the first class in paper and EUR 850 electronically. The fee for the second class is EUR 50 and the fee for the third class is EUR 150. The fee for all subsequent classes is EUR 150.