1. Bosnia and Herzegovina to use the list of terms from the harmonized database in TMclass. For more information here.
2. Geographical Indications after Brexit: the impact on food names. For more information here.
3. Licensing and selling intellectual property. For more information here.
China introduced a new intellectual property court on 01.01.2019. The main aim of this new court, which is a part of the Supreme People’s Court, is to bring more quality and efficiency regarding all sorts of intellectual property desputes in the country and in that way to send a positive signal to all local and foreign market players.
The new court will be responsible for:
- Civil law cases after the first instance
That includes: Invention patent, utility model patent, layout designs for integrated circuits, technical inventions, computer software, new plant varieties
- Administrative cases at first instance concerning more technical issues, including designs and monopoly disputes
- Protest cases after first instance appeal cases which have entered into force after first instance independently of the civil cases or administrative cases mentioned above.
For more information here.
Source: Dr. Meyer-Dulheuer & Partners LLP.
Image: David Besh/Pexels
The USPTO published its new guidelines on the eligibility of subject matter in patent applications.
With these guidelines, the USPTO gives some important clarifications on the implementation of the first step of the US Supreme Court’s Alice/Mayo test. There are two main changed in that regard:
- First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
- Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.
For more information here.
1. Mexico to use the list of terms from the harmonised database in TMclass. For more information here.
2. Digital royalties to creators top €1 billion as global collections rise 6.2% to €9.6 billion. For more information here.
3. How to label your European Year of Cultural Heritage 2018 event? For more information here.
WIPO published issue 5 of its WIPO Magazine where you can find the following:
- Artificial intelligence and intellectual property: an interview with Francis Gurry
- Bringing AI to life
- Pat-INFORMED: a new tool for drug procurement
- Intellectual property and e-commerce: Alibaba’s perspective
For more information here.
Conor McGregor encountered a new fight in the IP arena. This time the case concerns an opposition filed by the sporting apparel company Champion against McGregor’s application for a European trademark THE CHAMP CHAMP.
This isn’t the first time when the MMA fighter has problems with his trademarks. There are oppositions against his earlier applications for MYSTIC MAC and I AM BOXING too.
The reasons for such oppositions are from one side the nature of the relevant marks which consist of widespread and used words. From another side, the oppositions are highly possible because of the nature of the EU marks themselves, which gives opportunities for oppositions not only by earlier European trademarks but from earlier national trademarks in every EU Member State as well. And currently, we talk about 28 Member States.
Due to this potential complexity in the registration process, it is highly advisable a good IP strategy and preliminary trademark search to be implemented in advance and in particular in the brand building process.
We don’t know for sure whether there was a strategy and search in the case at hand and whether a decision was made for proceeding even with the chances for oppositions but nevertheless the case is indicative of the fact that every applicant has to be cautious when filing an EU trademark applications.
Source: Josh H. Escovedo (The IP Law blog)
Building of a trademark name is a long process which requires a plan for its execution. Part of such a plan is searching for earlier already registered trademarks in Patent Offices databases.
Why this is so important?
Even in the case that you create a distinctive brand name, this doesn’t mean that you will receive successful registration. The reason for this can be the fact that someone else already registered the same or similar name for the same or similar goods as yours. If that’s the case against your application an opposition can be filed and you can be sued as a trademark infringer.
To prevent such negative consequences, it is highly advisable for trademark searches to be done throughout the brand building process.
Having said that, however, it has to be bear in mind that non-specialists in the field of intellectual property can compare and assess mainly trademark identity. When it comes to similarity between the marks and their goods and services things can be much more complicated which requires deep knowledge of the legislation and court practices in the relevant country.
Image: Wokandapix, Pixabay.