Trademark

Project acronym, trade mark and joint ownership - what procedure should we follow for a joint trade mark application?

Case

The partners of our FP7 project intend to register the project acronym as a trade mark. We would like to know whether we can jointly own this trade mark and what procedure we should follow for a joint trade mark application.

Answer

Participants in EU-funded projects should consider the possibilities of registering their project acronym as a trade mark only if it will be used for commercial purposes and therefore will have a substantial commercial value. This means that the project name needs to be registered as a trade mark only if it will be used as a trade mark in order to indicate the commercial origin of products or services offered on the market.

In Horizon 2020 there are no specific rules related to the procedure to be followed if the project partners decide to protect their project acronym as a trade mark. Therefore, it is up to the partners of the project to agree on clear rules on the procedure to be followed when applying for a trade mark and to define the responsibilities for filing a trade mark registration application, maintaining (paying renewal fees), monitoring and enforcing trade mark rights.

As regards the ownership of a trade mark that will protect the project acronym, any solution is possible as long as this solution reflects best the intentions of the parties, and meets all partners' expectations and future exploitation interests.

Indeed, one of the possible options is to jointly file and own a trade mark. In this case, all partners could agree to designate one partner amongst themselves as their representative - this partner would file the trade mark application on behalf of all project partners. The trade mark would be owned by all partners, but an agreement could be reached as to its exploitation with regard to the products and/or services and territories of registration (e.g. the partners could agree on a geographical split of the market for exploitation purposes). However, joint ownership is not always advisable, as it often results in legal and financial complications (linked for example to the splitting of costs).

An alternative option would be to have one single owner of the trade mark - one of the project partners. This partner could file for trade mark protection over the project name and be the only trade mark owner with regard to the products and/or services and the territories covered by the registration. In this case, this partner could license the trade mark rights to each of the partners in order to allow them to exploit it, for example in a specific territory. This can be done by way of licensing agreements signed between the partners of the project.

In most European countries trade mark applications can be filed by more than one applicant, so-called multiple applicants. However, the administrative procedure of examination of a trade mark application and the requirements related to the person(s) entitled to file a trade mark application differ from one jurisdiction to another. Therefore, and particularly if the project partners decide to jointly file a trade mark application, it is advisable to be aware of the rules related to the registration procedure applicable to the relevant Intellectual Property Office. Please note that it is usually recommended to resort to the services of a trade mark attorney in order to file for trade mark registration. A trade mark attorney will help you choose between several routes to registration - national applications in each national IP office, EU-wide application through OHIM, international application through a system administered by WIPO – and will help you make sure that the protection chosen matches your commercial strategy.

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The SPB has introduced a new trademarks and designs e-filing system

From the 30th of September 2014, the submission of the trademarks and designs applications and other related documents can be filed through the newly amendment electronic system of the State Patent Bureau of the Republic of Lithuania (SPB). A new system allows filing the applications and sending other documents and communications more easily and faster.

The e-filing system is designed and implemented in collaboration with the Office for Harmonization in the Internal Market (OHIM). The improvement of the electronic tools will allow easier and more efficient services, consistently contribute to the state’s e-government implementation measures and reduce the likelihood of corruption.

For further information, please click here.

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Publication of the lists of Community trade mark and design courts

Would you like to know which are the competent Community trade mark and design courts in each EU Member State? Check this list published by the European Commission.

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TM5 – The five Trademark offices

The “TM5″ is a framework through which five intellectual property offices – namely, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (OHIM), the State Administration for Industry and Commerce of the People’s Republic of China (SAIC) and the United States Patent and Trademark Office (USPTO) – exchange information on trade mark-related matters, and undertake cooperative activities for their mutual benefit, and for the benefit of their respective trade mark filers and registrants.

The TM5 is an outgrowth of the Trademark Trilateral, a cooperative framework that JPO, OHIM and the USPTO first undertook in 2001. That framework was expanded to include KIPO and SAIC in 2011 and 2012 respectively, and the group became known as “TM5.”

Given the usefulness of the discussion on design issues within the TM5 collaboration framework, specific design sessions have been held in parallel to the trade mark sessions since 2010.

For more information, please click here.

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WIPO Launches Unique Image-Based Search

The World Intellectual Property Organization (WIPO) has unveiled a one-of-a-kind image-search function for its Global Brand Database, adding a new feature that allows users to upload an image to search for visually similar trade marks and other brand-information records from among the millions of images in the collection.

The new, easy-to-use image-search technology supplements the database’s other querying criteria, including Vienna Classification codes, brand-holder names, country of origin and others. With this new addition, for example, a user can simply upload a proposed logo and quickly return records – sifting through more than 4 million images from 15 national and international collections - of other protected images that may bear a resemblance.

For more information and to get acquainted with this new tool, please click here.

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Madrid Yearly Review on International Registrations of Trade Marks

The year 2013 saw the accession of four new countries to the WIPO-administered Madrid System. It is now possible for trademark holders to apply for protection and manage their trademarks globally in 92 jurisdictions through the centralized procedures offered by the Madrid System.

This report gives an account of the data compiled by the WIPO in the processing of international applications and registration for the calendar year 2013.

The full report is available here.

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Low cost branding protection with IP services support

The European Commission has set up specially developed services, provided by Enterprise Europe Network and the European IPR Helpdesk, to guarantee that SMEs and researchers can be provided with all the information and suggestions that are useful for managing international businesses and exploitable innovation.

This case study is an example of how the Enterprise Europe Network and the European IPR Helpdesk can work together to help the internationalisation of an European SME.

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Trade Mark e-filing now available at the Irish Patents Office

The Irish Patents Office is pleased to announce the launch of the new Trade Mark e-filing facility. This new development, which is available from 8 April 2014, will facilitate the filing of all trade mark applications on-line via the Patents Office website home page.

The new e-filing system introduces an easy-to-navigate application form and makes provision for the uploading of figurative marks in Jpeg format. The e-filing functionality also facilitates the electronic payment of the trade mark application fee by credit or debit card. Automatic error checking helps ensure that users input the correct data, a fee counter provides information on the cost of the application and the submission process is straightforward and results in an online confirmation receipt that includes a provisional application number which can be printed or saved. In addition the TMclass classification tool has been integrated into the ‘Goods and Services’ section of the online application form. This feature allows trade mark applicants to choose pre-approved terms of goods and services which are acceptable to the Office and will further streamline the examination process.

The new e-filing system is a result of a successful collaboration between the Irish Patents Office and the Office for Harmonization in the Internal Market (OHIM). The e-filing project was developed under the OHIM’s Co-operation Fund which is designed to promote further harmonization, modernise national IP offices, and make things easier for users of the European trade mark and design systems.

For more information, please click here.

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Denmark joins the Harmonised Database

The Danish Patent and Trademark Office (DKPTO) has joined the Harmonised Database of Goods and Services on 1 April.

With more than 60,000 terms shared by the participating offices, the Harmonised Database is already the biggest database for trade mark classification.

DKPTO is the 24th office to join. As a result, the Danish translations of the Database are now available to all users through TMclass.

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The Republic of Korea joins TMview

As of 12 February 2014, the Korean Intellectual Property Office (KIPO) has made its trade mark data available to the TMview search tool. With this last extension, TMview now provides information on more than 23 million trade marks in total.

For further information on TMview, please click here. To have a deeper understanding on how this tool works, you are also invited to read the European IPR Helpdesk fact sheet written in collaboration with OHIM on “How to search for trade marks”, available in the library.

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