Weekly Trademark Update – Aug 2021 (1 of 3)

Procedural misrepresentation

Procedural misrepresentation refers to the bypassing of requirements regarding who can be a legal practitioner or professional representative before the EUIPO. These are laid down in Article 120 of the EU trade mark regulation and Article 78 of the Community design regulation.

To prevent abuse, the EUIPO requires professionals who are interested in representing others to provide evidence of having a real and effective business or employment in the European Economic Area (EEA).

The Office performs a series of checks, in particular:

• when an existing representative requests a second or subsequent ID number;
• on a case-by-case basis where there is reasonable doubt regarding possible misrepresentations (for example when multiple IDs are requested for the same professional representative or where the address is a virtual one);
• when a third party questions the veracity of the representative’s place of business or employment.

If the representative fails to submit appropriate evidence or sufficient information, the EUIPO will delete them from the list of professional representatives or the database of legal practitioners.

Third party requests to invalidate an ID or to remove a professional representative from the list (on the grounds, for example, that the representative does not have a real place of business or employment in the EEA) must be substantiated and, in all cases, the party concerned will be given the opportunity to be heard before the EUIPO.

Unauthorised leasing of User Area credentials

Some representatives have been leasing their unique User Area credentials to independent third parties, allowing them to interact online with the EUIPO.

These third parties do not operate under the direct control, responsibility or supervision of the authorised representative, as defined in Decision EX‑20‑9, Article 3(1). They merely act under their identity. By disclosing their User Area credentials, the representatives grant access to all the files and information stored in their User Area to these third parties. This means they may obtain unauthorised access to confidential files and information relating to other represented persons, resulting in a breach of data protection rules.

In response to this, the Office has updated the Conditions of use of the User Area annex to the Decision of the Executive Director on communication by electronic means.

The main changes to the annex reflect the actions the EUIPO will take in the event of a potential prohibited disclosure. These can be found under paragraph 4 ‘Proper use of the user account’ which:

• determines that the responsibility for the proper use of the account and maintenance of confidentiality falls on the account holder;
• defines the ‘prohibited disclosure’ of credentials (the sharing or disclosure by account holders of credentials, passwords or administrative email accounts with any third party, that is, any entity or individual outside its organisation);
• identifies the steps the EUIPO will take after being made aware (based on evidence) of a potential case of prohibited disclosure (the Office will investigate the relevant facts and invite the account holder to comment);
• outlines the consequences and sanctions when prohibited disclosure is deemed to have taken place, which may include:
  • the temporary or permanent suspension of the User Area account;
  • asking the account holder to submit authorisations for the parties represented;
  • informing the competent national authorities; and/or
  • informing the competent data protection supervisory authorities.

A disclaimer has also been added to the annex stating that the EUIPO is not liable for any data breaches caused by the account holder’s prohibited disclosure of its User Area credentials.”

The 1 million digitised files milestone was achieved on 7 July 2021 at the Finnish Patent and Registration Office (PRH). The total number of digitised pages stands now at approximately 18 million.

The ECP5 Capture and Store Historical Files is a European Cooperation Project that aims to digitise paper dossiers across EU intellectual property (IP) offices to enable easy and rapid access to documentation and data related to trade marks and designs.

In the last 5 years, 11 national IP offices have participated in the digitisation project, including the Finnish Patent and Registration Office. Other offices like the Industrial Property Office of the Slovak Republic (SKIPO) have just recently joined.

This achievement is a result of the work of the implementation teams in Bulgaria, Estonia, Greece, Spain, Cyprus, Latvia, Lithuania, Malta, Slovenia, Slovakia and Finland, as well as the EUIPO.

A bit of history

The first group of IP offices started digitisation in 2017. At that time the European Union Intellectual Property Network (EUIPN) had limited experience with big data analytics and machine learning. Today these barriers no longer exist and the Network is making the most of these new technologies to input and manage big volumes of high-quality data.

But the ECP5 project does not stand on its own. Its results, geographical coverage and data have been instrumental for other European Cooperation Projects such as IMAS, Decision Desktop, and the Case Law Repository, as well as for established search tools like TMview and DesignView.

More information and news on our cooperation work”

The Act on the Fees in the Field of Intellectual Property was published in the “Official Gazette” No. 66/2021on June 16, 2021, and it came into effect on June 24, 2021.

The Act was adopted to abolish administrative fees in the field of intellectual property rights in national proceedings by repealing the Act on Administrative Fees in the Field of Intellectual Property Rights (“Official Gazette”, No. 64/2000, 160/2004, 62/2008, 30/2009, 49/2011), which provided for the obligation to pay administrative fees. The purpose of abolishing administrative fees is to harmonise with the obligations from international agreements as well as to implement the Action Plan for the reduction of non-tax and fiscal levies, which was adopted by the Government of the Republic of Croatia at its 229th session held on May 7, 2020. Consequently, administrative fees in proceedings before the Office shall no longer be charged as of June 24, 2021.

In connection with the initiated proceedings, i.e. those where the obligation to pay the fee or the costs was incurred and/or due by June 24, 2021 (the date of entry into force of this Act), and the obligations have not been settled, they will be charged according to the regulation in force at the time of the obligation, i.e. according to the Act on Administrative Fees in the Field of Intellectual Property Rights („Official Gazette“, No. 64/2000, 160/2004, 62/2008, 30/2009, 49/2011), pursuant to Article 11 of the Act on the Fees.

Please note that, although there are provisions in the substantive regulations governing the field of intellectual property (regulations in the field of patents, trademarks, industrial design, geographical indications and designations of origin of products and services, topography of semiconductor products) which provide for the obligation to pay administrative fees, they are repealed by the new regulations, and they will also be amended in the subsequent amendments to the substantive regulations.

The new Act regulates the basic issues related to the obligation to pay the costs of proceedings for the protection of intellectual property rights and fees for professional services provided by the Office, which, as before, are regulated in more detail by a regulation (now the Regulation on Fees for Special Costs and the Costs for the Provision of Information Services of the State Intellectual property Office („Official Gazette“, No. 109/11, 96/13 and 89/20). The Government of the Republic of Croatia is authorised to adopt the new regulation, as before. The Regulation on Fees for Special Expenses and Costs for the Provision of Information Services of the State Intellectual Property Office shall remain in force until the entry into force of the new regulation („Official Gazette“, No. 109/11, 96/13 and 89/20).

The amount of reimbursement of costs was revised in accordance with the circumstances existing in July 2020 with the adoption of the Regulation amending the Regulation on Fees for Special Costs and the Costs for the Provision of Information Services („Official Gazette“, No. 89/2020) and is not planned to be changed by the new regulation.

Fees/charges prescribed by international organisations, which are paid in international procedures for the grant of industrial property, do not change.

Publication in DR of the new rate table for the year 2021.

The new Table of Industrial Property Rates was published in the Diário da República, 2nd series, on June 8, and updates the rates for the various types of Industrial Property for the year 2021.

This table comes into force today, July 1st, and can be consulted here .”

1. The Ministry of Law (MinLaw) has tabled the Copyright Bill for First Reading in Parliament today.

2. The Copyright Bill (“the Bill”) seeks to repeal and replace the current Copyright Act. It will strengthen the copyright regime in Singapore, by updating the Copyright Act to stay abreast of changes in how content is created, distributed, and used. It will also make the law more accessible by simplifying the language.

Key Features of the Bill

3. The key features of the Bill are:

a. It will introduce new rights and remedies for creators, to ensure copyright continues to reward the creation of works and incentivise creativity. For example:

• A new right to be identified will require users to ensure that when materials are used in public, including when they are distributed on online, the creator or performer is acknowledged. This will help individual creators and performers build their reputation.
• Creators of photographs, portraits, engravings, sound recordings and films, whether commissioned or otherwise, will by default be the first owner of copyright unless otherwise prescribed by contract. This changes the current position, where the commissioning party owns the copyright by default. Creators will be better positioned to negotiate with the commissioning parties, and can further showcase and commercialise their works for other purposes.

b. It will create new exceptions to copyright owners’ rights, known as “permitted uses” to ensure copyright works are reasonably available for the benefit of society and to support innovation. For example:

• Copyright works, if lawfully accessed (e.g. without circumventing paywalls), can be used for computational data analysis, such as sentiment analysis, text and data mining, or training machine learning, without having to seek the permission of each copyright owner. This will support research and innovation efforts.
• Teachers and students may use freely available internet materials in their educational activities, including for home-based learning, as long as they acknowledge the source. However, if they are made aware that the source is infringing, they must stop using it. This new exception is timely, since the use of online materials for educational purposes has increased substantially.

A summary of the key changes can be found in the Annex.

4. The Bill will restructure and reword the legislation in plain English, to enhance its clarity and accessibility. The Bill adopts a more intuitive, thematic structure and provides illustrations to show how provisions should be applied in particular situations. This will allow creators, users, and intermediaries to better understand how the law works to both protect and provide access to works.

5. MinLaw and the Intellectual Property Office of Singapore (IPOS) would like to thank all respondents who provided feedback during the several rounds of public consultations culminating in a draft version of the Bill being issued for final consultation in February this year. Responses from the February consultation were taken into consideration in finalising the Bill. MinLaw’s full response to the February consultation can be accessed at www.go.gov.sg/copyright-consult-response.

6. If passed, we expect to be able to operationalise most of the provisions in the Bill in November 2021.”

The European Union Intellectual Property Office (EUIPO) and the Community Plant Variety Office (CPVO) signed a new Service Level Agreement (SLA) which entered into force on 21 July 2021.

The EUIPO and the CPVO operate in the field of intellectual property (IP) rights with similar operational and budgetary structures which are based on fees charged for services provided to industry. The EUIPO manages the registration of trade marks and designs while the CPVO is in charge of the protection of plant variety rights. Both organisations are part of a network of 48 decentralised EU agencies working to implement EU policies in fields as diverse as space, medicine, education, fundamental rights and IP.

The scope of the new SLA is wide and covers a series of key activities in different operational and administrative areas, such as the organisation of webinars on IP matters, the sharing of information in the context of the eSearch Case Law database, as well as cooperation on data protection, internal audits, development and deployment of IT services, training, and HR selection procedures.

This new SLA shows that the EUIPO and the CPVO are ready to continue cooperating and sharing services to strengthen their strategic partnership and generate effective economies of scale while respecting one another’s autonomy.

The EUIPO and the CPVO have cooperated and shared services in the past in line with the recommendations of the Common Approach promoted by the European Commission which has increased their efficiency and accountability. Earlier this year, an SLA was signed for EUIPO support to the CPVO Board of Appeal.

Closer partnership between EU agencies improve efficiency, reduces administrative burden and creates higher quality services for companies, Member States and EU citizens in general.

More information on the work of the EU Agencies”

Users of the Madrid System may now manage all transactions relating to changes in holder’s details and the recording of renunciations, via the WIPO IP Portal.

Change in Holder Details

This service allows you to change the holder’s name, address and contact details, as well as their legal nature, as recorded in the International Register.

An electronic version of the MM9 form, this transaction can now be performed entirely online and follows a step-by-step process.

Renunciation

This service allows you to abandon the effects of your international registration for all the goods and services in respect of some (but not all) of the designated Contracting Parties.

An electronic version of the MM7 form, this transaction can now be performed entirely online and follows a step-by-step process.

Features

• Up-to-date information on the international registration
• Automatic confirmation email sent to the person submitting the request enclosing:
  • the details of the transaction
  • the WIPO reference number associated to the request
• Change in Holder Details: search by holder or representative name, trademark or international registration number

How does it work?

1. Access each service through the WIPO IP Portal Menu.
2. Log in with your WIPO Account.
3. Indicate whether you are the holder or representative.
4. Change in Holder Details: Specify the kind of transaction you wish to perform (change of address, name, contact details and/or change in the legal nature of the holder).
   Renunciation: Skip to Step 5.
5. Search and select the international registrations for which the transaction applies.
6. Fill in the required fields and verify the information submitted.
7. Sign electronically.
8. Receive your confirmation and a WIPO reference number by email.”

Due to technical maintenance our online services will be unavailable Monday August 2 from 18.00 to 22.00 hrs:

• Register a trademark
• Renew a trademark registration
• Trademarks register
• File an opposition
• Register a design
• Renew a design registration
• Designs register
• i-DEPOT

We apologize for any inconvenience.”

As of 28 July 2021, the Intellectual Property Office of the Philippines (IPOPHL) uses and accepts the list of terms from the harmonised database of goods and services (HDB) in TMclass.

Following IPOPHL’s decision to use HDB, there are now 17 IP offices outside the EU which use and accept terms from this database.

The addition of IPOPHL in TMclass brings the total number of participating national and regional IP offices, including ARIPO, OAPI, WIPO and EUIPO, to 85.

TMclass offers users the opportunity to search and translate goods and services to and from any of the 44 languages available.

What is the HDB?

The HDB or harmonised database is the world’s largest multilingual database for goods and services. The terms it contains have been pre-approved by all EU national and regional IP offices, including the EUIPO.

Whenever a user selects a term from the HDB, they can be sure it will be accepted when their application is examined. It will also mean that the term is already translated into all other EU languages. The application can therefore be processed more smoothly.

The adoption of HDB by IPOPHL is a concrete result of the IP Key South-East Asia programme funded by the European Union and implemented by the EUIPO.

You can find out more at www.euipn.org and TMclass”

The CIPC is currently managing a File Transition Project during which +/- 7.2 million Company, Close Corporation, Patents, Trade Marks, Copyrights, Cooperatives and Designs etc. files will be moved to a new bulk storage facility, over a period of 4 months, as from Monday the 26th July 2021. Due to handover of files between current service provider and new service provider, files requested by CIPC on daily/weekly basis will be retrieved but will take a bit longer to be submitted to CIPC.

Please note that all unattended/unresolved disclosure requests will remain open on the disclosure workflow until the files have been received by CIPC, requests completed and documents dispatched to customers.

Customers must please not re-submit a request previously submitted as this will result in billing duplication.

Customers who have previously enquired about the status of their disclosure requests, are urged to be patient. Their requests will be attended to as soon as the files have been received by CIPC.

Customers who have not previously enquired about the status of their disclosure requests, can utilise the “enquiries portal”, http://www.cipc.co.za/index.php/enquiries/, from the CIPC website, for security and control purposes.

Enquiries via email or telephone will unfortunately not be attended to.

CIPC apologises for any inconvenience.”