WIPO published an interesting video that shows the development of the international patent application filing by countries.
USPTO soften the email requirement in case of new trademark applications
USPTO changed its mind and soften the requirement for providing an owner email address in every trademark application for the US. This was required apart from the email of the industrial property representative or trademark attorney.
According to the amendments, this second mail will be still required, however, it could be not the owner’s email. That is to say, apart from the attorney email every applicant has to submit another email address too.
Sourse: DSP Paper.
New requirements for trademark filing in the US
Marques Class 46 reports about new requirements by the USPTO in cases of filing trademark applications. From now on, every application has to contain the applicant’s email address. It doesn’t matter whether it is filed by industrial property representative or trademark attorney, the owner’s mail has to be mentioned in order for the mark to receive a filing date.
Another important announcement is the fact that in the case of specimens submitted for the purpose of proving trademark use in the US, all of them has to show not only the brand or its label, but as they are attached to the product itself, the image of which can represent a specimen. Otherwise, it is possible for specimens to be rejected by the Office.
The 2 millionth EU trademark application has been reached
EUIPO announced the 2 millionth EUTM application which was filed by the Czech company Crefoport s.r.o.
Only in 2018, there were more than 150 000 new applications for EU trademarks. All of that shows the dynamic interest toward these trademarks from around the world. What’s more, every new applicant has to be more careful when filing new EU trademarks taking into account the possible conflicts with already registered signs. One of the option to avoid this negative perspective is conduction preliminary trademark search followed by an in-depth analysis.
A successful indigo battle for O2 in The UK
The UK telecom O2 successfully won an opposition against a UK trademark application for Indigo Blue applied for class 41:
Arranging and conducting of concerts; Services for the showing of video recordings; Services providing entertainment in the form of live musical performances; Showing of prerecorded entertainment; Singing concert services; Song publishing; Song writing services; Songwriting; Sound recording and video entertainment services; Sound recording services; Sound recording studio services; Music concerts; Music entertainment services; Music festival services; Music performance services; Music performances; Music production; Music publishing; Music publishing and music recording services; Music publishing services; Music recording studio services; Musical concert services; Musical concerts by radio; Musical concerts by television; Musical entertainment services; Musical performances; Entertainer services; Entertainer services provided by musicians; Entertainment; Entertainment by means of concerts; Entertainment by means of radio; Entertainment by means of roadshows; Entertainment by means of telephone; Entertainment by means of television; Entertainment in the form of live musical performances (Services providing – );Entertainment in the form of recorded music (Services providing -);Entertainment in the form of television programmes (Services providing -);Entertainment services; Entertainment services for matching users with audio and video recordings; Entertainment services for matching users with computer games; Entertainment services for producing live shows; Entertainment services for sharing audio and video recordings; Entertainment services in the form of concert performances; Entertainment services in the form of musical vocal group performances; Entertainment services performed by a musical group; Entertainment services performed by musicians; Entertainment services performed by singers; Entertainment services provided by a music group; Entertainment services provided by a musical group; Entertainment services provided by a musical vocal group; Entertainment services provided by performing artists; Entertainment services provided by vocalists.
O2 invoked rights over several of its earlier EU trademarks for INDIGO and INDIGO2 for the same class.
According to the UKIPO, both signs are very similar because of the word INDIGO. The difference between them is the word Blue and the number 2.
From a conceptual point of view, the trademarks are almost identical bearing in mind that for some of the consumers Indigo is a shade of blue. A slight difference can arise only if Indigo is perceived as purple. However, even in that case, both colors are closed.
Taking into account that the first part of the marks is identical, the UKIPO uphold the opposition in its entirety.
This is yet another case which comes to show how important is preliminary trademark clearance search. This search can help a lot in the assessment of the chances one sign has to be registered as a trademark and from another hand to avoid eventual disputes.
It is always advisable to do your homework before to file an application. This will save you time and money.
Bear in mind this if you want to register a trademark in Canada
The trademark registration process in Canada will have some significant changes this year as a result of the trademark law reform which has been addopted recently.
The main changes that have to be taken into account by all who want to protect a trademark in there are:
1. The term of trademark protection will be reduced from 15 to 10 years.
2. Declaration of Use will be no longer required from trademark applicants – as it is well-known Canada, similarly to The US, has required until now such declarations which to show a real use of the sign on the market. This was one of the significant differences when it comes to trademark filing compare to Europe, for instance. But no more. Still, trademark use will remain an important element of the protection because it will be a ground for invalidation in the case of a lack of genuine use.
3. Canada will introduce Nice Classification for goods and services for the purpose of trademark filing. In that way, Canada has joined almost all countries around the world that already use this classification.
4. An additional fee will be paid for every class above the first in case of filling of a trademark application or trademark renewal.
San Marino joins the Hague Agreement
WIPO reports about the accession of the Republic of San Marino to the Hague Agreement Concerning the International Registration of Industrial Designs. This Agreement, which will enter into force for the country on 26.01.2019, gives an easy way for applying for industrial design protection in various countries around the world submitting only one application and paying one total fee instead of doing that in every single country.
More information can be found here.