Trademark

OHIM introduces Fast Track for trade mark applications

From next week on, the Office for Harmonization in the Internal Market (OHIM) will offer an accelerated procedure for trade mark’s registration: the Fast Track. With Fast Track the first step in the registration process, the publication of the application, can be achieved more quickly.

According to OHIM, in most cases if you use Fast Track it is very likely that the trade mark you intend to register will be registered more quickly. However, this is not always guaranteed since registration depends on whether there is a conflicting trade mark holder that presents an opposition and on how the opposition process evolves.

For further information, please click here.

Comment on this article on our LinkedIn group
Classification: 

Slovenia implements e-filing for trade marks and designs

The Slovenian Intellectual Property Office (SIPO) has implemented e-filing for trade marks and designs. The e-filing tool is part of the Software Package developed in the framework of the Cooperation Fund.

The new e-filing system represents a big step forward in the way trade marks and designs are processed and registered, making applications easier, quicker and more accessible to users of the Slovenian trade mark and design system.

The new SIPO e-filing system is available at http://www.uil-sipo.si/uil/dejavnosti/e-vloge/.

Comment on this article on our LinkedIn group
Classification: 

Tunisia joins TMview

As of 20 October 2014, The Tunisian National Institute for Standardization and Industrial Property (INNORPI) has made its trade mark data available to the TMview search tool. The integration of INNORPI is a concrete result of the International Cooperation programme managed by OHIM in collaboration with its international partners. The incorporation of INNORPI also means that the first trade marks in Arabic will be searchable in TMview.

This last extension brings the total number of offices participating in TMview to 36 and with the addition of more than 65,000 Tunisian trade marks, TMview now provides information and access to almost 24.5 million trade marks in total. Since the introduction of TMview on 13 April 2010, the tool has served more than 9 million searches from 214 different countries, with users from Spain, Germany and Italy among the most frequent visitors.

For further information on TMview, please click here.

Comment on this article on our LinkedIn group
Classification: 

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.

Classification: 

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.

Comment on this article on our LinkedIn group
Classification: 

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.

Comment on this article on our LinkedIn group
Classification: 

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.

Comment on this article in our Linkedin group

Classification: 

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.

Comment on this article in our Linkedin group

Classification: 

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.

Comment on this article in our Linkedin group

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.

Comment on this article in our Linkedin group

Classification: 

Pages