Weekly Trademark Update – Oct 2021 (2 of 3)

“On the 12/10/2021 the Department of Registrar of Companies and Intellectual Property Law of 2021 (N133(I)/2021) was published in the Official Gazette of the Republic of Cyprus, on the basis of which the Department of Registrar of Companies and Official Receiver (DRCOR) is renamed the Department of Registrar of Companies and Intellectual Property (DRCIP), and the Intellectual and Industrial Property Section is renamed, Intellectual Property Section.

The change in the Department’s name was deemed necessary, given the establishment of the Department of Insolvency in 2020 (N68(I)/2020) and the transfer of all competencies, powers and duties of the Official Receiver to the Insolvency Department, but also because of the need for the Department’s name to reflect the entire range of competencies, powers and duties as implemented by the Companies and the Intellectual Property Sections.

It is noted that on the basis of the provisions of section 7(1) of the Law, any reference to, among other things, the Department of Registrar of Companies and Official Receiver in any law, regulation, scheme of service and/or public document which does not relate to the competencies of the Department of Insolvency, should be read as reference to the Department of Registrar of Companies and Intellectual Property.”

“Details

The Department of Registrar of Companies and Intellectual Property Law of 2021 (N133(I)/2021) was published in the Official Gazette of the Republic of Cyprus, on the basis of which the Department of Registrar of Companies and Official Receiver (DRCOR) is renamed the Department of Registrar of Companies and Intellectual Property (DRCIP), and the Intellectual and Industrial Property Section is renamed, Intellectual Property Section.

Registrar of Companies and Intellectual Property Law 133(I)/2021“

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Singapore.

This page provides practical information to help you make the most of your IP when doing business in?Singapore.?

If you plan to do business in?Singapore,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our ?South East Asia attaché team, based in the High Commission in Singapore.

The Intellectual Property Office Singapore (IPOS) is the body responsible for operating the patent, industrial design and trade mark system in Singapore.

Trade marks

The Singapore trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Singapore you can:

Apply direct to IPOS via the IPOS portal or smartphone app IPOS Go.

Make an international trade mark application and select Singapore as a designated country. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

There are no restrictions regarding nationality or residency for trade mark application however, an address in Singapore must be provided in your application.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in Singapore. All patent rights in Singapore are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in Singapore you can:

File an application directly to IPOS.

File an international patent application and select Singapore as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the protecting your patents abroad page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

Singapore operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Singapore does operate grace period where you can register a patent within 12 months of any public disclosure.

There are no restrictions regarding nationality or residency however, an address in Singapore must be provided in your application.

You can file a patent yourself in Singapore but it is recommended that you seek advice from an IP professional.

Designs

In Singapore, design protection initially last for 5 years and can be extended for two consecutive periods i.e. protection can last for a maximum of 15 years.

To protect your design in Singapore you can:

File an application directly to IPOS.

File an international design application and select Singapore as a designated country. This can reduce the cost and effort of applying for designs in multiple countries. More information on international designs can be found in the protecting your designs abroad page.

Good to know

Singapore operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. Singapore does operate grace period where you can register a design within 12 months of any public disclosure.

There are no restrictions regarding nationality or residency however, an address in Singapore must be provided in your application.

Copyright

As in the UK, copyright is an automatic right under Singapore law.

Copyright in Singapore protects works that are original and expressed in a tangible form, for example, recorded on tape or written down.

The length of protection varies but generally lasts for 70 years counted from 1 January of the year following the author’s death.

Enforcing your rights

IP enforcement is generally effective in Singapore. If your IP rights are infringed, there are 3 main options for enforcing the. including civil litigation, criminal prosecution, and customs seizures however mediation via legal professionals is often an effective and lower cost option.

Civil litigation can be used for patent, copyright of trade mark infringements only where the remedies can range from damages, injunction of the disposal of infringing goods. IP rights holders can initiate private criminal prosecutions which can result in fines and/or imprisonment.

If you suspect goods infringing your trade mark or copyright are being imported into Singapore, you can notify customs of suspected shipments. If infringing goods are detained, you have 10 days to begin legal proceedings from the date of detention. Businesses will need to be proactive about monitoring for infringing shipments and not rely on notification from customs.

More information

Visit these pages for more information about exporting to Signapore and to report a market access barrier on IP in Singapore.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to enter markets across Southeast Asia including Singapore.

British Chamber of Commerce in Singapore provide a variety of business advice, services, and support to businesses in Singapore.

The British High Commission Singapore supports UK businesses in Singapore.”

“1. On September 28, 2021, the Government of the United Arab Emirates deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”). The Madrid Protocol will enter into force with respect to the United Arab Emirates on December 28, 2021.

2. The said instrument of accession was accompanied by:

– the declaration referred to in Article 5(2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit; and

– the declaration referred to in Article 8(7)(a) of the Madrid Protocol, whereby the United Arab Emirates want to receive an individual fee when they are designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration where they have been designated, instead of a share in the revenue produced by the supplementary and complementary fees.

3. The amounts of the individual fee indicated by the Government of the United Arab Emirates under Article 8(7)(a) of the Madrid Protocol will be the subject of a separate information notice.

4. With the accession of the United Arab Emirates to the Madrid Protocol, the number of Contracting Parties of this treaty and members of the Madrid Union is now 109. A list of the members of the Madrid Union, with information on the dates on which they became party to the Madrid Protocol, is available on WIPO’s website, at the following address: www.wipo.int/madrid/en/members.”

“It is about the adaptation to Circular No. 398, of 2020, which allows establishing the mechanism to give continuity to the judicial system affected by the State of Constitutional Exception.

This Wednesday, October 20, Circular No. 455 was published in the Official Gazette , which seeks to give continuity to the judicial system in INAPI that was interrupted by the effects of the COVID-19 pandemic.

In this way, Circular No. 398 of 2020, implemented during the period of the State of Constitutional Exception, is adapted to Law No. 21,379, which modifies Law No. 21,226.

This new Circular establishes the mechanism to reactivate contentious procedures in the matter of trademarks and patents that have been affected by the health crisis, such as the suspension of evidentiary terms and the holding of pending evidence hearings, among other actions.

Likewise, it specifies that the validity of the rules it contains extend until November 30, 2021. To access Circular No. 455, click on the following link.“

“Bosnia and Herzegovina is moderately prepared in the field of intellectual property rights, according to the European Commission’s annual report on progress in the process of European integration.

In the coming year, Bosnia and Herzegovina is expected to make significant efforts, primarily to improve implementation and coordination. In particular, Bosnia and Herzegovina should implement the strategy on enforcement of intellectual property rights and amend the Law on Patents.

Last year, the BiH Council of Ministers adopted a Decision on the establishment of an Interagency Body for Cooperation in the Field of Acquisition and Enforcement of Intellectual Property Rights in Bosnia and Herzegovina, which will base its work on measures and recommendations given in the Development Strategy of the BiH Institute for Intellectual Property and the Strategy for the Implementation of Intellectual Property Rights in BiH, which is the basis for defining and establishing a comprehensive and efficient system for the enforcement of intellectual property rights in accordance with the requirements of accession to the World Trade Organization (WTO) and the European Union (EU).

Regarding the amendment of the Law on Patents, in the procedure of the Parliamentary Assembly of BiH is the Proposal of the Law on Amendments to the Law on Patents, which was sent by the Council of Ministers of BiH at the proposal of the Institute for Intellectual Property of BiH, which would fully harmonize this law with the current acquis communautaire and fulfil the obligations under the Stabilization and Association Agreement (SAA).

With regard to copyright and neighbouring rights, the legislative framework is largely aligned with the EU acquis. Further alignment is needed, in particular in the area of orphan works and collective rights management. Copyright works and related rights were deposited and registered in the IIP. Six organisations in the country are authorised for the collective management of copyright and related rights, states the EC report.

In the area of industrial property rights, the legislative framework is partially aligned with the EU acquis. Further alignment is needed, in particular for patents, trademarks and trade secrets. Bosnia and Herzegovina has acceded to the relevant multilateral conventions, as required by the SAA, except for the European Patent Convention, for which it still has to adopt relevant amendments to the Law on Patents.

Regarding enforcement, „in the reporting period the Indirect Taxation Authority received only 69 requests for customs measures based on protected trademarks and issued 57 decisions on temporary retention and seizure of goods. The State Investigation and Protection Agency investigated only 36 cases of which 6 were closed while the remaining 30 cases are still under investigation “.

„The administrative and judicial capacity of the enforcement institutions remains insufficient and their cooperation needs to be strengthened. Bosnia and Herzegovina’s strategy on IPR enforcement has yet to be implemented. The country still does not have a reliable system for collecting and analysing data nor for exchanging data between the various enforcement institutions. Steps need to be taken to ensure businesses and consumers are involved in preventing counterfeiting and piracy, including through awareness-raising campaigns, across all enforcement institutions. Prosecutors, judges and court panels handling cases involving intellectual property law need to be more specialised to handle such cases in a more efficient and consistent manner”, the European Commission report said.

European Commission adopted an enlargement package for 2021 on October 19th, giving a detailed assessment of the current situation and progress made by the Western Balkans and Turkey on their path to the European Union, with particular emphasis on implementing fundamental reforms, as well as clear guidelines on forthcoming reform priorities.”