The new version of the Global Brand Database is available

WIPO reports about the launch of the upgraded version of the Global Brand Database. The change concerns mainly the interface which, according to WIPO, is more user-friendly now. The database provides some interesting stats for the searches too.

In general, this database provides access to:

• WIPO international trademarks under the Madrid protocol,
• national and regional trademarks shared by national and regional IP Offices,
• International Nonproprietary Names for Pharmaceutical Substances (INN),
• WIPO appellations of origin under the Lisbon Agreement and
• WIPO emblems under Article 6ter. It includes WIPO data

What is a database for intellectual property rights?

A database for intellectual property rights represents an organised way of storing information for all IP assets that one company or individual owns. Such a database is important because it allows these assets to be managed properly and their protection to be maintained successfully.

The database can include different sections depending on the type of intellectual property. Typically it would give easy access to the relevant information and the necessary flexibility for better efficiency.

Intellectual property databases are absolutely essential for every company or individual that possesses such assets.

Through such a database the owner can look over all of its assets, can follow the relevant deadlines for work with Patent Offices and business partners, can keep an eye on the different terms related to these assets, can work easily with its IP attorneys and customers, etc.

Without an IP database, the risk of missing deadlines or for example a term for renewing IP protection can rise significantly. What’s more, the owner will not know what IP assets possess and can miss opportunities for profiting from them or even can lose money.

The database gives a clear view of what you have and at the same time provides you with an option to manage your assets in a more efficient way.

If we put potential flexibility to the database this by itself can not only organize your assets but can save you time and money in the long run.

There are several options for the creation of an IP database:

• A standard excel sheet — is probably the easiest way to build an intellectual property database. You can create a classic excel table where to fill in the whole information for your IP rights. The plus here is that this is a very easy way, however, there are several downsides. First of all the excel file doesn’t have reminders that can pop up or can be sent to your email. Even in case, there are some solutions for that you will need to put additional efforts in that regard. Another problem could be if you store this file locally on your computer you can lose it because of technical issues. And when the file becomes too heavy it can be troublesome to be managed.
• A paid specialised software — is definitely the best option, because such software is built with the purpose of managing IP assets. There are two main downsides, however. The first is that such software is expensive in most cases, which could be a challenge for individual IP owners, small or even mid-sized companies. The other issue could be that the software can be complex requiring some specialised knowledge and training which could prove costly.
• Adapted cloud-based applications — the third option is to use some cloud-based apps that, while not created specifically for database purposes, with some adjustments could be utilized to do the job. This is a good choice for individuals, freelancers, authors, and small- to mid-size companies and startups. In most cases, it doesn’t require a large budget and it can be used without serious training.

I’m finding this third option quite interesting and capable of doing the job. That’s why I created this a Udemy course in order to show you how to use one such free application, in this case, Asana, to create your own IP database which will serve you well for the purpose it is built for. I hope that you will like the course.

Now there is a promo code — 95% OFF — for the course, you can find it here

You can find a referral link to the course here too.

Malaysia joins DesignView

The Intellectual Property Corporation of Malaysia (MyIPO) has added its national designs to the global database for industrial designs DesignView.

In that way, new 39 000 designs will be available through DesignView which gives access to more than 18 million designs.

All of this means that IP practitioners and business owners now will be able to search for registered designs in Malaysia easily saving time and money while building appropriate design strategies for this country.

A new trademark database for some Andean countries is available

The EUIPO launched a new trademark database called CAN TMView that covers four Andean countries – Bolivia, Colombia, Ecuador and Peru.

The new trademark database, which is similar to the TMView database, will give access to more than 1.3 million trademarks in those for countries which population exceed 111 million people.

This is a good news for every trademark practitioner that has interest in registration of trademarks for these countries. The database is easy to use and will help a lot for conducting preliminary trademark searches and building appropriate trademark strategies.

For more information here.

When is there an infringement of database rights?

The European Court has ruled in case C‑762/19 „CV-Online Latvia“ SIA v „Melons“ SIA. This dispute concerns potential infringements of sui generis rights over databases and has the following background:

CV-Online, a company incorporated under Latvian law, operates the website http://www.cv.lv. That website includes a database, developed and regularly updated by CV-Online, containing job advertisements published by employers.

The website http://www.cv.lv is also equipped with meta tags of the ‘microdata’ type. Those tags, which are not visible when the CV-Online web page is opened, allow internet search engines to better identify the content of each page in order to index it correctly. In the case of CV-Online’s website, those meta tags contain, for each job advertisement in the database, the following key words: ‘job title’, ‘name of the undertaking’, ‘place of employment’ and ‘date of publication of the notice’.

Melons, also a company incorporated under Latvian law, operates the website http://www.kurdarbs.lv, which is a search engine specialising in job advertisements. That search engine makes it possible to carry out a search on several websites containing job advertisements, according to various criteria, including the type of job and the place of employment. By means of hyperlinks, the website http://www.kurdarbs.lv refers users to the websites on which the information sought was initially published, including CV-Online’s website. By clicking on such a link, the user can, inter alia, access the website http://www.cv.lv, in order to become acquainted with that site and the entirety of its contents. The information contained in the meta tags inserted by CV-Online in the programming of its website is also displayed in the list of results obtained when using the specialised search engine of Melons.

Taking the view that there is a breach of its sui generis right under Article 7 of Directive 96/9, CV-Online brought an action against Melons. It maintains that Melons ‘extracts’ and ‘re-utilises’ a substantial part of the contents of the database on the website http://www.cv.lv.

The court of first instance found that there had been a breach of that right, on the ground that there was a ‘re-utilisation’ of the database.

Melons brought an appeal against the judgment at first instance before the Regional Court, Riga (Civil Law Division), Latvia. It maintains that its website does not provide online transmission, namely, that it does not operate ‘in real time’. Melons also claims that a distinction must be drawn between the website http://www.cv.lv and the database which it contains. It submits, in that regard, that it is the meta tags used by CV-Online that cause the information relating to the job advertisements to appear in the results obtained by means of the http://www.kurdarbs.lv search engine and that those meta tags are not part of the database. Melons claims that it was precisely because CV-Online wanted the search engines to show that information that CV-Online inserted those meta tags in the programming of its site.

In those circumstances, the Regional Court, Riga (Civil Law Division), Latvia decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Should the defendant’s activities, which consist in using a hyperlink to redirect end users to the applicant’s website, where they can consult a database of job advertisements, be interpreted as falling within the definition of ‘re-utilisation’ in Article 7(2)(b) of [Directive 96/9], more specifically, as the re-utilisation of the database by another form of transmission?

(2)  Should the information containing the meta tags that is shown in the defendant’s search engine be interpreted as falling within the definition of ‘extraction’ in Article 7(2)(a) of [Directive 96/9], more specifically, as the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form?’

The Court’s decision:

Article 7(1) and (2) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that an internet search engine specialising in searching the contents of databases, which copies and indexes the whole or a substantial part of a database freely accessible on the internet and then allows its users to search that database on its own website according to criteria relevant to its content, is ‘extracting’ and ‘re-utilising’ that content within the meaning of that provision, which may be prohibited by the maker of such a database where those acts adversely affect its investment in the obtaining, verification or presentation of that content, namely that they constitute a risk to the possibility of redeeming that investment through the normal operation of the database in question, which it is for the referring court to verify.

China joins the TMView database

EUIPO reports about the addition of the China national trademark database to the global database TMView. In that way additional 32 million trademarks are accessible through TMView which now covers more than 96 million trademarks from around the world.

This is definitely a good news for every company that plans to enter the China market with own brand. Searching for earlier already registered trademarks is a key element when it comes to avoiding unnecessary trademark conflicts.

Source: EUIPO.

One key moment for every brand-building process

Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.

Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements. 

That’s true up to a point but it’s not the whole picture. Why?

Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.

What do I mean?

Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:

1. The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
2. The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.

All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.

Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.

So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.

In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.