The European Intellectual Property Office (EUIPO) and the .eu and .ею domain registry manager EURid announced the launch of a new service which will help the fight against bad faith domain registrations.
Some people have taken advantage of early publication of EUTM applications and registered the EUTM as a .eu domain name in bad faith. Effectively reducing the risk of such cyber-squatting infringements requires adopting preventive actions such as raising awareness and pro-actively informing the EUTM holders.
As of 18 May, holders and applicants of a EUTM can opt-in to receive alerts as soon as a .eu domain name is registered that is identical to their EUTM (application). By receiving such alert, EUTM holders are informed much faster and may take appropriate action much sooner.
For more information here.
The Bulgarian Patent Office started a new initiative for brief video tutorials regarding registration of different intellectual property objects.
The video below gives information on how you can register trademarks in Bulgaria. Although this video is on Bulgarian it has subtitles in English.
The Japanese Patent Office refused to register as a trademark the phrase GRAND CANYON for class 25 – clothes, shoes etc.
The reason behind this decision was the fact that according to the law in Japan and many other countries, signs that indicate a geographical origin in regard with the relevant goods and services are not allowed for registration as trademarks.
In the case at hand, GRAND CANYON is a well-known US national park, recognized by UNESCO as a World Heritage Site.
What’s more, GRAND CANYON is famous with all sorts of merchandising products known and purchased by consumers around the world, including those in Japan.
From that perspective, it is highly likely consumers to perceive it in connection with the US national park than as a trademark sign.
Source: Masaki MIKAMI, Marks IP Law Firm.
Trecina Surti (Novagraaf) published a short guide in Lexology regarding some of the most important considerations when it comes to brand building and trademark registration. The conclusions which can be made are:
- It is highly recommendable descriptive brand names to be avoided. The reasons for these are many. From one hand, some of these names will receive refusal for trademark registration by the Patent Offices. From another point of view, such names can be registered in combination with graphics or other distinctive words, however, this protection will be weaker due to the fact that the descriptive elements can be used by everyone.
- The brand name descriptiveness has to be evaluated bearing in mind the different languages. For instance, in the case of European trademarks, even if the brand name is distinctive in one of the languages in the EU, in case that it is descriptive in another one, the trademark can receive a refusal.
- Clearing trademark search for earlier similar or identical marks has to be done before any use of a trademark, because otherwise if you start using it, you can be accused of trademark infringement.
The full article can be found here.
WIPO reports about the accession of Malawi to the Madrid Protocol for international registration of trademarks. In that way, the participating Member States become 102.
Registration of international marks for the country will take up to 18 months, the period when a refusal can be issued. Apart from this, any trademark license in order to be valid on the territory of Malawi has to be registered in the local Patent Office.
The Protocol will come into force for the country on 25.12.2018.
More information here.
Martin Hendry (Virtuoso Legal ) published an interesting and instructive article for Lexology which discusses the options one entrepreneur has in order to register its trademark.
The first case is when the business owner files for a trademark by himself without using professional help by a trademark attorney. The example presents a story of a Plumber company, which wants to develop a franchise network. The company’s owner in attempt to save some money filed a trademark application by himself without any trademark clearance search. In the meantime, he invested in advertisements and branding. The result was an opposition by a third party and financial loses after that. You have to bear in mind that in such situation a legal proceeding for trademark infringement can be activated by the owner of the earlier rights too.
The second case concerns a situation where the owner seeks support of a trademark attorney who does a trademark search for earlier already registered identical or similar marks and analyses the results. In that way, they can identify the chances for a successful registration and the risk for prospective problems.
But what are the chances to run into identical or similar marks?
Not so small. Only the TMView database gives access to more than 48 million trademarks around the world.
Not only the article proclaims that professional help is advisable in such situations but also the need for an IP strategy which to pave the way for a successful exploitation of IPRs after that.
Many companies and entrepreneurs underestimate these elements of their business which in some cases leads to a serious headache and financial loses.
The Eurasian Economic Union (EAEU) is an economic union between Russia, Armenia, Belarus, Kazakhstan, and Kyrgyzstan, which resembles the EU in some way.
From that point of view, Liudmila Serova (Gorodissky & Partners) published a very intriguing article for Lexilogy, which discusses how you can register trademarks in EAEU. In brief, there are three main ways in that regard:
- To register national trademarks in every separate country – the article gives some interesting details for the trademark legislation in the countries part of EAEU. For example, the well-known status of a trademark in Kazakhstan has to be proved every 10 years after renewing of the mark. The period for non-use of a mark in Russia, Kazakhstan, and Kyrgyzstan is only 3 years.
- The second option is to register trademark based on the Madrid system for international registration of marks.
- The last option is to register a regional EAEU trademark, which is a new option where you can file one application designating the countries part of the EAEU where you want your trademark to be registered. It’s an easier and cost-effective way.
More information can be found here.