Weekly Trade Mark Update (July 2021)

The EUIPO and the European Association of Development Agencies (EURADA) have signed a collaboration agreement to encourage activities and promote services that support small businesses.

The agreement covers activities such as training in intellectual property, knowledge sharing, participation in events and awareness raising.

This collaboration is part of the EUIPO’s push to support EU businesses in developing their IP strategies and protecting their IP rights in the context of the Ideas Powered for Business initiative. This initiative, which is hosted in the EUIPO site, provides tailored guidance to companies, vouchers for IP registration , as well as dispute resolution services.

EUIPO & EURADA

The EUIPO is the European agency responsible for managing the EU trade mark and the registered Community design which are valid in all EU Member States.

EURADA facilitates cooperation among regional economic development practitioners and represents development agencies before the European Union institutions.”

TIPO replaced the “Trademark Agent” section of the official website with “Business of Trademark Agents” and updated the reference list of trademark agents that have 20 or more applications for trademark registration per year for 5 consecutive years. This section will be updated annually.”

In response to the periodic revision of the 11th edition (Version 2021) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 24 items have been added and 8 items deleted from the names of goods/services designated for trademark application and registration. Among the categories/subcategories, 4 items have been added, 4 remarks made, and 2 names altered.

The changes above have been implemented as of July 1st, 2021, and the Designated Names of Goods and Services for Trademark Registration on the electronic trademark application system will be updated simultaneously. Applicants are recommended to download the latest changes from the updated system featuring all incorporated changes. Filling out an application with names of goods and services not found on the system’s current list means missing out on a fee reduction of NT$300.”

(Department for Promotion of Industry and Internal Trade)

(IPR-Estt. Section)

NOTIFICATION

New Delhi, the 22nd April, 2021

S.O. 1668(E).—In Pursuance of the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 vide Notification No. CG-DL-E-04042021-226364 dated 04thApril, 2021, the Intellectual Property Appellate Board established vide section 83 of the Trade Marks Act, 1999 stands dissolved with effect from 04^th April, 2021.”

IPReg has recently accredited CPD Training’s Higher Courts Advocacy Course, open to attorneys who already hold the IPReg Higher Courts Litigation Certificate.

Those who complete the Higher Courts Advocacy Course can apply to be awarded the IPReg Higher Courts Advocacy Certificate.

This certificate represents rights of audience in the High Court, the Court of Appeal and the Supreme Court, allowing holders to appear as advocates in these courts for civil matters.

The course comprises of several elements, including an assessment in Evidence, Ethics and Procedure, an exercise in witness handling, and a trial speech or submission. The training also covers subjects including case analysis, cross-examination and professional conduct, including diversity awareness.

All candidates must be a UK registered Patent Attorney or Trade Mark Attorney.

The training is available either in person or online. The in person course takes place over two days.

Alternatively, the online equivalent offers access to extensive resources and a three hour session with a trainer.

If interested in attending the course, please click here for more information, or contact CPD Training directly.”

Just ten weeks remain until the filing deadline for UK priority applications based on rights that were pending at the EUIPO on 1st January 2021.

The Intellectual Property Office (UK IPO) is warning that, if too many design and trade mark rights holders leave it until the end of September to file, they will experience delays in receiving examination reports.

If you had a pending right at the European Union Intellectual Property Office (EUIPO) on 1st January 2021, you can file an equivalent UK right at the UK IPO and claim the earlier filing date of the EU right. The deadline for making these applications is 30^th September 2021.

The UK IPO is urging holders of such rights to file these applications as soon as possible. This will allow the office to examine cases in a timely manner and will help effectively manage the workload.

If a majority of rights holders wait until the end of the period to file these cases, it could increase the timeframe for the issuing of all examination reports.

The process

Under Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union, holders of EU Trade Marks and Registered Community Designs that were pending on 1st January 2021 can file for a UK right and claim the earlier filing date of the EU trade mark or design.

Holders can:

• Apply to register the same right as a UK right within nine months after the end of the transition period, this being up to and including 30th September 2021
• Claim the earlier filing date of the pending right
• Claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it

If holders apply to register a pending right as a UK trade mark, the application must:

• Relate to the same trade mark that was the subject of the EU right application
• Seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application

If the details of the application do not match those of the corresponding EU application, it will not be possible to claim the earlier EU filing or priority dates.

By submitting the application within nine months after the end of the transition period, the UK IPO will then:

• Treat the pending EU application as a UK application
• Examine it under UK law

The usual UK fees apply.

Click here for more information”

Beware of the new misleading letter in circulation! It takes the form of a fake EUTM payment reminder letter uses the EUIPO logo, name, acronym and address, and purports to be an EUTM payment reminder issued and electronically signed by a senior manager of the Office. It includes a demand for a registration fee to be transferred to a Polish bank account.

Users are reminded that they can protect themselves from misleading invoices and letters by taking careful note of the following.

1. The EUIPO never sends invoices or payment demands to its users. If you receive a demand for money for anything to do with your trade mark by post or email, it does not come from us. Even if it uses our logo, and appears to be official, it does not come from us.
2. Familiarise yourself with our fee structure (and make sure others in your firm or company are familiar with it too). All fees payable directly to the EUIPO in relation to EUTMs are laid down in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark. A full list of these statutory fees can be found here. In addition, be aware that we only use two Spanish bank accounts for payments relating to trade mark and design fees.
3. Check everything you receive in relation to your trade mark application, registration or renewal very closely. If you have even the slightest doubt, contact us; we want you to let us know if you have received anything that looks suspicious. You can email us at information@euipo.europa.eu. We also maintain a searchable database of all misleading invoices that our users send us.
4. The User Area is a completely secure channel through which you can pay and receive notifications from us safely. You can sign up here.

In 2020 alone we recorded 50 % more email and phone call interactions coming from our users on matters related to these types of fraudulent activities than in the previous year.

The EUIPO will take the necessary criminal legal action against suspected offenders. We are fully committed to protecting our users, especially at this time, when fraud attempts are on the rise.

To enhance the efficiency of our actions, we cooperate closely with national and international IP offices, user associations, Europol and Eurojust in the fight against this type of fraud. So far, we have initiated over 30 legal actions against scammers in several jurisdictions before the competent law enforcement authorities and have taken other measures to secure bank account closures or administrative penalties for incompliance with data protection rules.”

1. The Government of Colombia has notified to the Director General of the World Intellectual Property Organization (WIPO) a declaration modifying the amounts of the individual fee payable with respect to Colombia under Article 8(7) of the Madrid Protocol.

2. As from September 17, 2021, the amounts of the individual fee payable in respect of Colombia will be the following:

3. These new amounts will be payable where Colombia

(a) is designated in an international application which is received by the Office of origin on or after September 17, 2021; or

(b) is the subject of a subsequent designation which is received by the Office of the Contracting Party of the holder on or after September 17, 2021, or is filed directly with the International Bureau of WIPO on or after that date; or

(c) has been designated in an international registration which is renewed on or after September 17, 2021.”