Dreyfus

The Benelux countries, namely Belgium, Luxemburg and Holland, have adopted certain changes concerning the protection of trademarks and designs on their territories.

In a desire to simplify procedures, the Benelux Office for Intellectual Property has made 4 major changes:

Marks can be renewed simply by paying the renewal fee

As from October 1st 2013, sending the renewal payment fee is sufficient to maintain trademark protection. It is no longer necessary to send a prior written request. Moreover, it is possible to pay fees online on the Office website which thereby simplifies the procedure.

A new working language

French and Dutch were the two official languages, but as from October 1st 2013 English is now a third option. In effect, applications can now be filed in English which would lead to the whole procedure being completed in English.

Calculation of the opposition period

The calculation of the opposition period will no longer be based on the first day of the month following publication but on the publication date itself. In other words, for a publication made on November 20 2013, the opposition period would expire on January 20 2014 and no longer on February 1st 2014.

Extension of the period for the suspension of oppositions

In the event of the suspension of an opposition procedure, the previous delay of two months has now been extended to four months.

If Belgium and Luxembourg have not previously been part of the system for international industrial designs, it now is. This is respectively because on June 7 2013 and September 3, 2013, the Belgian and the Luxembourgian government signaled the deposit of its instrument of ratification of the Hague Agreement.

Although in contrast to the European Union, Benelux is not a member of the Hague Agreement. For this reason it is important to specifically designate the three countries when filing an application in order to ensure effective protection across these territories.

As a reminder, this system concerns the international registration of industrial designs. An attractive proposition, it affords protection in the different member countries (61 at present(1)) by means of a single application to the World Intellectual Property Organization (WIPO) in a single language (French, English or Spanish) which is relatively inexpensive.

Moreover, processing is relatively quick since in principle the publication of the registration occurs six months after filing the application and protection is guaranteed for 5 years. As for extensions, they can be obtained in accordance with the legislation of each member country, though this is limited to 25 years for the European Union. This system is an excellent mechanism for the protection of international industrial designs.

Although Belgium’s and Luxembourg’s accession will not greatly enhance the attractiveness of this Agreement, the impending membership of the United States and Great Britain, on the other hand, will undeniably reinforce the scope of this system established by the Hague Agreement.

We are glad to see additional countries joining this system for international protection which clearly demonstrates its effectiveness.

                                                                       
(1)    http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf

The Ministry of Commerce and Industry responsible for the protection of trademarks in Saudi Arabia has recently made significant changes to the trademark application process, with effect from September 25 2013.

A dedicated online platform

The main novelty is the digitalization of the procedure for registering a mark. In effect, requests to register a trademark from now on can only be filed online via the portal provided on the Ministry website(1). But it is important to specify that local agents specialized in the protection of trademarks must ensure prior registration in order to provide access to this platform.

The process for filing an application

In order to apply to register a trademark, the applicant must provide his agent with a signed power of attorney by sending a scanned color copy to the dedicated platform. The same day, or by the following morning, the Trademark Office will either reject or approve the power of attorney.

However, the procedure is not fully digitalized, so that if power of attorney is approved, the original version must still be sent to the Office. There again, the anticipated processing time is short: that same day or shortly afterwards the power of attorney will be added to the online account of the local agent who will therefore be able to initiate a trademark application request on behalf of his client. Power of attorney registered in this way will be valid for all future applications.

As for the choice of classes, these are limited to the categories listed in the 10th edition of the Nice classification published in 2012. The only inconvenient aspect of this new procedure is that in the event of a priority claim, the priority document must be produced at the time of the claim in a scanned version as well as sending the original hard copy to the Trademark Office.

Updates on the application use modern communication channels.

In a desire to reflect modern trends, information about the progress of the dossier is sent to the local agent by SMS or by e-mail.

The digital process is limited to new applications.

It is important to note that this procedure only applies to new applications for the time being, whilst extensions, changes to the name of the mark holder and other related amendments are not yet available online.

All these changes reflect the desire for modernization in recent years that Saudi Arabia has expressed in terms of trademark protection. We warmly welcome their approach.

                                                               
(1) http://tm.mci.gov.sa.

In the US, judicial actions are possible for multiple domain names on the basis of the Anti-cybersquatting Consumer Act and the Lantham Act.

Two types of actions are possible depending in the objective of the trademark holder. In this respect, the possibility to claim compensation and the reimbursement of the attorney fees may be a crucial issue in the decision-making process for a judicial action in the US.

If this objective is pursued, the choice of an action in personam may constitute an appealing choice. It is ground on the capacity of the parties to activate the jurisdiction of a US Federal Court (the registrant is domiciled in the US, the trademark owner has right protected in the US) and authorizes the claimant to claim compensation and reimbursement of attorney fees.

Since this action cannot cover all situations, it should be noted that an action in rem in other words directed against the domain name themselves may be considered for the registrant that cannot fit in the first category.

Dreyfus is at your disposal for any advice you might need.

The word « BIO » means « life » in Greek and is understood by most people in the world as the root of the word « biologic ». Often considered as a synonym of “good” and “healthy”, it brought amazing success to the “BIO” sign over recent years.

However, after reaching a summit of popularity, this term’s usefulness is now in decline.

The intensive use of the word “BIO” has led to a decrease in the trademark’s distinctiveness and has thereby given to confusion between trademarks using the “BIO” sign.

In France alone, more than 4,800 valid trademarks contain the sign “BIO”. If around 1,400 of those products concern the food industry (1,425 registries in class 30 and 1,035 in class 31), it is increasingly used by other products such as pharmaceuticals (class 5 with 1,311 registries) or cosmetics and cleaning products (class 3 with 1,317 registries).

This trend is confirmed in all other countries (The European Union has 7,800 valid trademarks, the USA 3600).

Australia is a flagrant example of this phenomenon: 2,300 marks include the word “BIO” and 90% of them use it as a prefix.

In such a context, the trademarks are difficult to defend.

For example, the German Federal Patent Court has recently ruled on the similarity of two trademarks, both sharing the same “BIO” prefix: « BIONSEN » and « BIOPHEN ». Even if it didn’t emphasize the “BIO” element, the Court ruled that the later mark, BIOPHEN, was to be removed from registration.

The publication of the new Intellectual Property law expected in July was delayed and should be in force in 2014.

As a matter of fact, Myanmar government has to re-draft some additional requirements of WTO (1) and WIPO (2). Until then, the existing law is still effective.

So, there is not yet examination system for Trademark Application or Certificate of Trademark Registration deliveries, but a Declaration of Ownership of Trademark should be filled with Office of the Registrar of Deeds in Yangon, Myanmar capital.

This declaration is an initial evidence of use in case of dispute and can be supported by records publication on local newspaper.

This declaration has no precise validity period, but it is recommended to renew the record in every 3 years. First and last declarations will be strong evidences of use in case of possible disputes.

(1) World Trade Organization.
(2) World Intellectual Property Organization.