Dreyfus

Rwanda’s intellectual property legislation has been undergoing a wave of reform and modernization for a couple of years now. Indeed, a number of changes have been made in the area of Rwandan intellectual property. A new law, Law No. 005 of 2016, and several ministerial orders have introduced a number of amendments to existing legislation. More specifically, a Ministerial Order on the 17th of March 2016 is reshaping some aspects of the landscape of industrial property.

A reorganization of the opposition procedure to trademarks and geographical indication registrations

Article 3 of the Ministerial Order of March 17th, 2016 amends the length of the opposition period allowing a challenge to an application request for registration of a trademark or geographical indication. The new law means the holder of an intellectual property right can file an opposition within 60 days after the publication of the application request, as opposed to 30 days, previously.

Although the 60-day period was made official by Article 3 of the order, the Rwandan registry has already been allowing for the 60-day opposition period for 19 months.

The same Article 3 of the Ministerial Order grants a 14-day response period to the trademark registration applicant.

Meanwhile, Article 4 expressly sets out the information that an opposition to a trademark or geographical indication registration must contain: the identity of the holder of the registration request of the sign, the nature of the opposition, detailed reasons for the opposition, physical evidence of the grounds for the opposition, powers of attorney (if necessary) and the date and signature of the opposing party.

The decrease of several taxes
A large number of changes in tax rates has also taken place in Rwanda.. In particular, the following official taxes relating to trademarks have been reduced:

– Trademark filing;
– Change of name recordal;
– Change of address recordal;
– Merger recordal;
– Renewals

The Ministerial Order of March 17th, 2016 has,, within the trademark registration system, also introduced taxes linked to the classes of the Nice classification.

Rwandan law has also been reformed to allow for the protection of different plant varieties. Rwanda joined the Madrid Protocol on August 17th, 2013, finally allowing trademark holders to designate Rwanda in an application for international protection.

It will be interesting to see how these reforms are received by trademark holders in Rwanda but also to see potential further modernization of Rwandan intellectual property legislation given a wider international context.

Thailand has recently undergone a significant and welcome change in the landscape of intellectual property. Indeed, the government has decided to bring into force an amendment on trademarks, “Act B. E. 2559,” effective as of July 28th, 2016. The Act will reform current procedures through a series of legal amendments.

The amendments represent Thailand’s first step towards international standardisation of its protection of intellectual property rights. Whilst the current challenge is to construct a legal infrastructure Thailand would then be able to gradually build up towards accession to the Madrid Protocol. However, even if the amendment introduces a number of developments into Thailand’s intellectual property legislation, more decrees will have to be adopted in order to complete this core structure.

A reform of the trademark registration process

A first step in bringing the legislation closer in line with the Madrid Protocol was done through the drafting of a law, in force since July 28th, 2016 allowing for multi-class trademark registration. Until then, one could only register trademarks in one class/category. The reform mainly simplifies the process of issuing trademarks, allowing for the protection of products and services of different categories under the same trademark.
Before the trademark reform, a prior application would result in the automatic cancellation of other applicants’ rights to register a similar or identical trademark even if the application was still under review and its registration still in progress. As of July 28th, 2016, subsequent applications will simply be suspended during the review period of the first application. Furthermore, trademark holders are no longer allowed to apply for the association of several similar trademarks.

Strengthened trademark protection

• Change in timeframes

On one hand, the amendment of the law on Thailand’s trademarks will bring changes to the current timeframes. The response time to an objection or an opposition made to Thailand’s Trademarks Office has now been reduced from 90 to 60 days.

On the other hand, the time limit to pay the registration fee is extended from 30 to 60 days after the registration notice date. It is also possible to request for an extension of the deadline.

A grace period of 6 months after the expiry date has also been added. During that time, trademark holders will be authorized to renew their trademark applications in exchange for the payment of a higher rate .

• Registration of sound marks

One of the amendments that has gotten a lot of media coverage is the possibility of registering sound marks via the Thailand Trademark Office. This protection has been in force in other countries for some time. In France for instance, audible signs can give rise to a valid trademark pursuant to the law of 4 January 1991, if the signs are represented by musical scores or sonograms.

Thailand has now decided to admit that goods and services can be distinguished by audible signs. Such sound marks are a natural complement to the category of protected trademarks. However, in Europe, a judgement of the Court of Justice of the European Union dated November 27, 2003 (CJEU November 27, 2003, n°C-283/01) has further highlighted the protection of sound marks. The European judges ruled that only a transcription constituting a musical score complies with the requirements so that the “graphic representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” Therefore, we will have to wait for developments in Thailand’s caselaw to effectively define the framework for this new addition to the field of distinctive marks.

Kenyan trademark law has recently undergone reform. The enactment of the Companies Act 2015 and Companies (General) Regulations 2015 has resulted in a change in practice for the Kenyan Industrial property Institute.

The Institute now has the obligation to examine the occurrence of pre-existing trademarks when it assesses the name of a company. Indeed, the name of a company should be refused if it is considered as offensive or undesirable: the name of a company will be considered as such if it includes a trademark which has already been registered.

However, it is possible to bypass this requirement by seeking the consent of the holder of the pre-existing trademark and requesting to be able to register the company name, despite the pre-existing registered trademark.

Finally, the Office’s obligation in terms of the company name does not apply the other way round: the Kenyan Industrial Property Institute need not examine pre-existing company names when evaluating applications for trademarks.

On February 29, 2016, the National Assembly of the Republic of Korea adopted a bill which significantly amended the Korean Trademark Act. The revised Act will come into effect on September 1st, 2016.

The reform is the result of several proposals made by the Korean Intellectual Property Office to amend legislation relating to trademarks. The new law also incorporates all and any amendments made since 1990.

The main objective is to shorten the trademark registration process and to facilitate trademark filing applications. Where a court decides on the cancellation of a trademark registration based on non-use, the decision may be taken into consideration when an application for the registration of a new trademark (which is identical or similar to the cancelled trademark) is under examination. It will then not be necessary to file a new registration application for the same trademark. Furthermore, an applicant can now file arguments against a notification of rejection of trademark registration application from the Office, beyond the original set time limit and may also ask that the procedure be continued.

Definition of a “trademark” under the revised provisions

Firstly, the definition of a “trademark” has been simplified. Article 2(1)(i) defines a trademark as “either of the following that is used on goods related to the business of a person who conducts business activities, such as producing, processing, certifying or selling such goods, to distinguish them from the goods of others; a) a sign, a character, a figure, a three-dimensional shape or any combination of these; or b) other visually-recognisable constructs.”

Henceforth, a registered trademark is “a trademark used to identify and distinguish between the goods of one person and those of another”, irrespective of the type of trademark.

More admissibility for cancellation cases based on non-use: removal of the legal standing requirement

A Korean trademark may be cancelled if it has not been in use for three consecutive years prior to the cancellation application.

Article 73(6) of the existing Act, allowed an “interested party” to apply for cancellation of a mark based on non-use, during the three consecutive years prior to the cancellation application, either by the trademark owner or holder of an exclusive or non-exclusive license on the trademark. Article 119(5) of the revised Act removes the requirement of legal standing and therefore, any person may request cancellation of a non-used registered mark without having to justify the locus standi.

Previously, pursuant to Article 73(7), where a cancellation trial decision became final, the trademark right would be extinguished on the date that the decision was finalised. This date is now amended by Article 119(6) which makes a final non-use cancellation decision retroactive as of the filing date of the cancellation trial.

The reform aims to relieve the workload of the courts, that of trademark registrars and also accelerate current procedures. Indeed, for the year 2014, the Korean Intellectual Property Office reports 150,266 trademark applications and 3,823 trademark trial applications including 1,449 cancellation applications. Out of these cancellation applications, 1,396 rulings were issued.

The reform will also allow courts to focus primarily on the issue of cancellation without addressing the locus standi of the applicant.

In addition, it should be noted that Article 8 removes the mandatory six-month term imposed on the applicant when filing a cancellation claim for non-use. Filing a trademark application 6 months prior to the cancellation action is no longer required; the only subsisting criterion is that the application for registration should be made before filing the cancellation application.

Change in the examination procedure of a trademark in cases of identical or similar registered trademarks

A trademark similar or identical to a prior registered trademark cannot be registered under Korean law.

According to Article 7(1)(vii), an examiner will need to assess whether such identical or similar trademark existed on the date of the trademark registration application. Yet, if the registered trademark were to be invalidated, cancelled, abandoned or assigned after filing the application, it would not affect the registration of the new trademark: the examiner would go on to reject such a registration because it was identical or similar to the registered trademark at the time of filing the trademark application. Regardless of what happens after the filing, the petitioner would still benefit from the outcome.

It is for this reason that Article 34(2) of the revised Act changes the examination of identical or similar trademarks with the new trademark to the examination date of a registred trademark. If appropriate, any decision revoking, invalidating, abandoning or assigning a trademark will be taken into account during that examination and the examiner will thus be able to accept the registration of this new trademark.

The revised Act has also repealed Article 7(1)(viii) which required a person to wait for one year following a trial decision cancelling the trademark registration, before applying to register a trademark identical or similar to the extinguished one.

The Article sought to avoid confusion between two trademarks in the customers’ minds. However, it did not prevent confusion in cases where the registered trademark was assigned to two different persons through a license (this is made possible by Article 54). The Article was therefore removed in order to shorten the application procedure for registering a trademark.

The reform initially expected in 2015 by professionals active in the field of trademark law and by the Korean Intellectual Property Office, seems to have achieved its objectives. Despite this one-year delay, the reform is consistent with the proposals made by the Office in 2012 and contributes to enhance and balance trademark law in Korea, for trademark applicants.

The Sultanate of Oman, a Middle Eastern country situated in the south of the Arabian Peninsula, has undergone several major changes in its intellectual property law through the decision no. 124/2016 of the Ministry of Trade and Industry.

A major reform for trademark holders

This act is mainly designed to regulate the registration of trade names and to extend trademark protection for the benefit of holders of intellectual property rights. Prior to this reform, trade names were not published as trademarks and could not, therefore, be subject to an opposition. The new act now allows all trademark holders to apply for the cancellation of any trade name, if the latter is similar to a national or international trademark already registered and protected in Oman.

Dr. Ali bin Masoud al Sunaidy, Minister of Commerce and Industry, also recalled a fundamental principle in the field of Omani intellectual property law. Indeed, registered trade names must be composed of Arabic words, except if they are names of international companies registered in the Sultanate.

In addition, a trade name with political, religious or military connotations, or containing the word “Oman” will also be refused.

A regional opening
This change is in line with recent legislative developments carried out in the Middle East. The United Arab Emirates for instance have adopted, in early 2015, a similar reform to reduce conflicts between trade names and trademarks.

The use of a trademark as a hashtag on social networks sometimes causes problems for companies who feel that their intellectual property rights have been infringed.

Opposition to an unrestricted and free use of the hashtag, in this case #Rio2016, also originated from several Olympic Committees in the context of the 2016 Summer Olympic Games in Rio.

The firm position of the Olympic Committees
During the Summer Olympic Games of 2016, the hashtag “#Rio2016” was obviously widespread across the Internet and on various social networks. Many Internet users and companies have frequently used the hashtag to support and encourage their national team.

However, not everyone was enthusiastic about this practice. In fact, several Olympic Committees, including Germany and the US, banned the use of the hashtag by non-Olympic sponsor companies. The Committees considered that the companies were not entitled to use the hashtag since, according to the Committees, such use is an act of counterfeit which infringes their intellectual property rights.

In the United States, the Committee served notice to a women’s ready-to-wear company, Oiselle, to remove a picture posted on Instagram of a track and field athlete of the national team who is also the brand ambassador, and under which the caption included the hashtag #RoadtoRio. The founder of the trademark, Sally Bergeson, has also reacted to the controversy by posting on her blog an article about the rule that is causing this prohibition, “Rule 40“. The rule, enshrined in the Olympic Charter states that “except as permitted by the IOC Executive Board, no competitor, team official or other team personnel who participates in the Olympic Games may allow his person, name, picture or sports performances to be used for advertising purposes during the Olympic Games.”

However, the decision was not unanimously nor positively welcomed. Some companies in the United States defended themselves by suing the Committee and condemned a ridiculous and far too strict restriction policy.

Abusive bans

In Europe these prohibitions also seem absurd. In reference to the judgment of the Court of Justice of the European Union on September 22, 2011 involving Interflora and Marks & Spencer, the use of a trademark as a Google AdWord can be an act of counterfeit if that use has adverse effects on the functions of the trademark, that is, on the specific image which the company wants to create in the mind of the consumer. One can draw a parallel between Google AdWords and hashtags and consider that only a hashtag which adversely affects the functions of the trademark can be prohibited.

Yet, if the company simply wishes to support its country in the context of the competition and if no business link is established between the Olympic Games and company (i.e. if the hashtag is not used in relation to the goods and services of the company), then it is entitled to use this hashtag.

The hashtag #Rio2016 therefore cannot be protected in the same manner as the Olympic rings symbol for example, because it is not a trademark or a design within in the strict legal sense of the term. Thus, its use should not be as limited as some Olympic Committees are arguing.

Despite no Regulation having been adopted, the law on industrial property of January 6^th, 2014 is now in force in Uganda. The new act affects a major part of intellectual property law but does not reform trademark law.

Regulated protection for patents

The first revisions made, affect patents. The duration of protection has now been set at 20 years from the application date.

The reform also allows for the recognition of national and international application phases of the “Patent Cooperation Treaty” (PCT).

Furthermore, it allows for a formal establishment of exclusions: a list of everything that is not patentable. One of the most important exclusions is that of the human body and all its elements, in whole or in part. Natural substances are also excluded from patentability, whether they are purified, synthetic or isolated from nature by any other method. Finally, there is ban on the patentability of pharmaceutical products.

The protection of “Utility Models”

Only minor inventions are referred to by the notion of “Utility Models”, an intellectual property right unknown to French law. “Utility Models” need to have characteristics similar to those applied to patented inventions: they must be new and have an industrial application.

The protection period is 10 years from the date the “Utility Model” status was granted.

It should be noted that a patent application can be converted into an application for a “Utility Model” at any moment during the registration process.

The protection of industrial designs

National protection is now possible in this area, thus replacing the Anglo-Saxon system which allowed for designs to be registered automatically by extension. However, any rights existing before the reform will not be affected.

The protection of industrial designs has a duration of 5 years and is renewable twice. A single application may include two or more designs, provided they belong to the same class under the Locarno classification, or to the same set or composition of articles.

Following the results of the referendum and the resignation of David Cameron, Theresa May has now been appointed Prime Minister and shall lead the Brexit. As laid out in our previous articles on the Brexit (Brexit: How to prepare oneself for the consequences?; The consequences of Brexit on trademarks and patents), implications on intellectual property law are to be expected, and in particular, on trademark and patent law. Such implications however, are not yet clear.

As tensions rise between concerning their future relationship between the United Kingdom and the European Union, here is a brief overview of the systems the U.K. could adopt once the divorce has been finalized.

First option: membership with the EFTA together with a free trade agreement

The United Kingdom has first and foremost the possibility to join the European Economic Area. The country would be joining Norway, Liechtenstein and Iceland. This would allow the U.K. to have complete access to the Single Market while accepting the principles of freedom of movement of persons, capital, goods and services. It would therefore be bound by the majority of European legislation and be subject to the jurisdiction of the ECJ – without taking part in actually making the European legislation. As a member of the EFTA, the UK could negotiate its own trade agreements. However these principles, particularly the principle of freedom of movement of people, are one of the main reasons behind the Brexit campaign! Therefore, it seems unlikely that the United Kingdom will opt for this model.

Second option: EFTA membership without a free trade agreement

The United Kingdom could be a member of the EFTA without being a member of the EEA, like Switzerland who negotiates agreements with the EU bilaterally. The United Kingdom could thereby freely decide which sectors to open to the Single Market. This would be particularly relevant to the banking sector.

This scenario, just like the previous one, sees the UK as a member of the EFTA having necessarily to accept the free movement of persons and more specifically, of workers. It would also involve participation in the European budget. A bilateral agreement could then be signed with the European Union in terms of access to the Single Market. Consequently, even though in theory the United Kingdom would not automatically be bound by European legislation, it would in practice need to comply with it so as to guarantee mutual access to the Single Market. Just like Switzerland, it would be able to have restricted access to the European banking market.

Third option: abide by the rules of the WTO

Some say this would be the “safety net” if no agreement of free trade is entered into by the United Kingdom and the European Union. Unlike in the scenarios where membership to the EFTA is sought, the United Kingdom here, would not need to accept the principle of free movement and would hence be free to establish its own policies, especially in matters of immigration and trade. Moreover, the United Kingdom would be free to negotiate bilateral agreements – however, these would not necessarily be as advantageous as the ones applied when the United Kingdom was a member of the European Union.

In spite of this, the application of the rules of the WTO entail a number of complications, especially relating to customs since this would imply re-establishing customs barriers, evaluating goods at customs and verifying the origins of products.

To be continued!

The new gTLDs were launched in October 2013. More than 1000 new gTLDs have been created since, and more than 20 million domains bearing a new gTLD have been registered. While this development provides a wider choice to Internet users who want to register a domain name, it poses a threat to trademark holders who now face a higher risk of usurpation of their trademarks.

Still waiting for second round

There are less and less available domain names with standard extensions (like .com or .net), which is why a second round of new gTLDs is now becoming necessary. It would encourage more trademark holders to create their own domain name.

During its last meeting in Helsinki on June 27, 2016, ICANN annouced that the second round will not take place before 2018.

The review of rights protection mechanisms

Before opening a second round, ICANN must review and improve current trademark protection mechanisms. Indeed, the tools have not been changed since the emergence of new gTLDs in 2013 and are sometimes not in line with the current context.

ICANN has in particular worked on special procedures for post-delegation dispute resolution, and notably the URS and UDRP procedures. These procedures allow trademark holders to find alternatives for when their trademark is usurped as a domain name. The Trademark Clearinghouse, a general database allowing a trademark holder to check necessary information for the protection of his/her rights, has also been examined by ICANN.

The aim of all these improvements is to offer sufficient protection to trademark holders, especially in the current context where more and more new gTLDs may appear in the coming years.