Bulletin - IP Updates

Weekly Trademark Update – Aug 2021 (3 of 3)

CHANGE: Diplomatic Conference for the Adoption of the ARIPO Protocol on Voluntary Registration of Copyright and Related Rights


The 40th Session of the Administrative Council held in Harare, Zimbabwe from 5th to 7th December 2016, identified the need to adopt a Protocol on voluntary registration of Copyright and Related Rights under the ARIPO framework and hence approved a roadmap for the establishment of a Voluntary Registration and Notification system at ARIPO. In pursuance of the objective, a feasibility study, policy, and legal framework were developed.


Following approval by the 17th Session of the Council of Ministers for the Legal Framework on establishing a regional voluntary copyright registration and notification system to be formulated into a Draft Protocol for adoption, a Diplomatic Conference set to be held in Kampala, Uganda in July 2020. However, the Conference was rescheduled due to the prevailing COVID-19 situation.


The highly anticipated Diplomatic Conference is now scheduled to take place on the 27th and 28th August 2021 at the Speke Resort Munyonyo in Kampala, Uganda. The Diplomatic Conference will be preceded by an Experts’ meeting that will bring together Copyright experts from the ARIPO Member States on 20th and 21st August 2021 and the Eleventh Extraordinary Session of the Administrative Council of ARIPO from 22nd to 26th August 2021.


The draft Protocol, upon its adoption, will establish a Regional Voluntary Registration of Copyright and Related Rights and create and maintain a Regional Database for Copyright and Related Rights for the ARIPO Member States. This will benefit them in different ways, such as: enhancing an effective and efficient network between the National offices in charge of Copyright and Related Rights and the Regional office, providing an effective means of presumption as to authorship and or ownership, facilitating commercialization, stimulating more creativity, expanding markets, attracting foreign direct investment and facilitating the enforcement of rights.


In conclusion, ARIPO sees the need to nurture, promote and protect Copyright and Related Rights, which is vital to the growth of Intellectual Property (IP) and has enormous cultural, economic, and social implications for the community we live in. Hence, the voluntary registration of Copyright and Related Rights reassures business communities and opens doors for rights holders. The system will enable effective coordination between Copyright Offices, Collective Management Organizations, rights holders, and users of Copyright at large.”

CHANGE: Agreement on the enhancement of Japan-ASEAN IP Cooperation at the Eleventh Japan-ASEAN Heads of IP Offices Meeting


On August 2, 2021, the Japan Patent Office (JPO) and the intellectual property (IP) offices of the Association of Southeast Asian Nations (ASEAN) Member States held the Eleventh Japan-ASEAN Heads of IP Offices Meeting via video conference.


At this meeting, participants agreed on the FY2021 Japan-ASEAN IP Rights Action Plan. Additionally, the Economic Research Institute for ASEAN and East Asia (ERIA) presented a full report of their study on patent examination practices of AI inventions at the individual IP offices of ASEAN Member States.


JPO will continue to promote further international cooperative initiatives with overseas IP offices.


Please refer to the press release titled “Enhancement of Japan-ASEAN IP Cooperation (External link)” for information regarding the outcomes of the meeting.”



The National Service of Intellectual Property – SENAPI, a decentralized entity of the Ministry of Productive Development and Plural Economy, from January to July of this management, managed to issue 1860 registration titles, which grant title holders to the applicants for trademark registrations, as well achieved the registration of 52 patents, more than double those registered in 2020; Likewise, it registered 2,210 works in copyright and related rights, more than three times higher than in 2020; thus showing the creative and intellectual work that is generated in our country and the importance that the State gives to the work of creators and creators as the engine of productive development in Bolivia.


SENAPI actively participated in the process to obtain a common protection regime that avoids the unauthorized use of the “Country Brand” of the member countries of the Andean Community of Nations (Bolivia, Colombia, Ecuador and Peru) and to promote the positioning of the same in other continents, thus achieving Decision No. 876 of the Common Regime on Country Brand that will allow Bolivia to strengthen the international positioning of the Bolivian Brand by promoting tourism, exports and the image of the country.


SENAPI concluded the work of preparing the draft Law on Registration, Protection, Promotion and Preservation of Ancestral Knowledge and Traditional Knowledge of the Indigenous Peasant Nations and Peoples of the Plurinational State of Bolivia, seeking the protection of ancestral knowledge and practices; It has also been carrying out the dissemination of the intellectual, creative and innovative production of authors, male and female entrepreneurs, making the public delivery of trademark and patent registration titles; It also conducts seminars, workshops and talks, as a training mechanism on Intellectual Property issues.


And we will continue to advance in the work at the service of the Bolivian people, since the elaboration of regulations that will benefit the population is planned, such as the draft of the Intellectual Property Law; This is also how the patent competition will be launched; Similarly, seeking to encourage production units to register the distinctive signs of their products and contribute to economic reactivation, the reduction to zero rate is projected for the registration of Collective Trademarks; and a new Decision on Denominations of Origin is being worked on. “

SOURCE: Senapi
CHANGE: OECD: Trade in illegal counterfeit and pirated goods continues to pose a massive problem


Illicit trade in counterfeit and pirated goods still poses a massive problem which affects Danish jobs, may cause serious safety and health risks and threaten Danish welfare.


Shoes, clothes, electronics, toys and cosmetics. Despite a major effort, illicit trade in illegal counterfeit and pirated goods is still a massive problem. A new report from OECD and EUIPO (the European Union Intellectual Property Office) concludes that despite a decline since 2016, there has been no decrease in the illegal trade in counterfeit and pirated goods since 2013.


According to the report, trade in counterfeit and pirated goods amounts to up to 2.5 per cent of the total world trade as opposed to 3.3 per cent in 2016 and 2.5 per cent in 2013. At the same time, it is estimated that the import of counterfeit and pirated goods to the EU amounts to 5.8 per cent of the total import or 119 billion Euro per year.


‘It is still alarmingly large numbers that make an impression. There is no doubt that the trade in illegal counterfeit and pirated goods still poses a massive problem and is a direct attack on law-abiding companies, jobs and consumer safety. Combating illegal trade in counterfeit and pirated goods therefore still requires a focused and coordinated effort,’ says Barbara Suhr-Jessen, Head of Department at the Danish Patent and Trademark Office, who coordinates the cooperation in Denmark between 12 authorities combating counterfeit and pirated goods.


Danish companies are some of the most vulnerable

In the survey’s overview of customs’ detentions of illegal counterfeit and pirated goods, Denmark is at the very top of the list of OECD countries whose companies are most often targeted by counterfeiters.


The study is primarily based on data gathered before the corona pandemic. However, the report highlights that the rising e-commerce during the epidemic has led to a massive increase in the supply of counterfeit and pirated goods on different online platforms, including social media.


‘The massive trade in counterfeit and pirated goods is a global problem which must be combated with various means. In Denmark, we do a lot, but organised criminals constantly find new ways to sell fake products and cheat consumers. This has major implications for legitimate companies that invest effort and resources in building a successful business. Therefore, it is good news that it has recently been decided at EU level to include the fight against counterfeit and pirated goods in the 10 priority areas to fight serious and organised crime. This is expected to strengthen the fight against counterfeiting in the EU,’ says Barbara Suhr-Jessen.


According to the report, counterfeit and pirated goods can be traced to several different countries, but, by far, China remains the largest exporter of illegal counterfeit and pirated goods.


Previous reports from EUIPO conclude that in Denmark, trade in counterfeit and pirated goods result in an annual loss of 4.2 per cent of direct sales within 11 sectors. This corresponds to DKK 6.17 billion in lost sales for businesses and almost 4000 lost jobs in Denmark. Across the EU, trade in counterfeit and pirated goods result in 468,000 lost jobs as well as lost sales for businesses in 11 sectors amounting to up to DKK 446 billion annually.


Read the report from OECD and EUIPO.


For guidance to businesses on how to prevent fakes, please visit our information site on counterfeiting and piracy. Here, you can also read about opportunities for actions in case infringement has already taken place.”

CHANGE: China mulls to establish a unified intellectual property law


In response to a proposal made by a member of China’s National People’s Congress (NPC) calling for the creation of a ‘unified intellectual property law’, the CNIPA said in a statement issued on 15 July that it endorses the proposal and has conducted research on establishing a fundamental IP law since 2009. Against the backdrop of the enactment of China’s Civil Code, the CNIPA thinks a centric IP law system is conducive to creating a consistent set of rules to be applied across all types of IP rights and reduces the duplication and overlapping of rules subsisting in the separate laws on individual right. Given that the administrative functions for multiple IP rights have combined after the government institutional reform in 2018, a unified IP law could be a natural next step. Read official announcement in Chinese.”

JURISDICTION: United Kingdom
CHANGE: Changes to the way IPO fees are paid


We are changing the way fees are made to the IPO. We will be moving to use GOV.UK Pay for online payments and using shorter payment references.


A more seamless payment experience


From 23 August 2021, the Intellectual Property Office (IPO) joins over 200 other UK government organisations in taking fee payments using GOV.UK Pay.


All fees paid online to the IPO using a credit or debit card will be made using the GOV.UK Pay service. GOV.UK Pay is secure and fully Payment Card Industry (PCI) compliant. It is used and trusted across government to take payments for over 500 different services.


The new screens will provide all the same options as the Barclaycard service we have used for the last 4 years. The big difference regular online customers will notice is that they no longer move away from GOV.UK branded screens when making a payment.


Deposit account holders’ payment options will not change.


A shorter payment reference


We are making an improvement to the process of paying fees for paper forms. The online process for paying these fees remains the same, with one small change. Instead of receiving a 16 character reference after you make a fee payment, you will now receive a 10 character payment reference. This is what you will enter onto the IPO form you are completing.


Customers have told us that the previous reference was very long and easily confused with a credit card number. Moving to a shorter reference removes that confusion and makes it easier to enter accurately on our forms.


Service disruption weekend of 21 to 22 August 2021


We plan to implement the above changes to our payment systems over the weekend of 21 to 22 August 2021. Customers accessing fee-bearing online services may experience disruption over these two days and we apologise for any inconvenience this causes.


Strong Customer Authentication (SCA)


New banking industry rules come into force over the next few months to reduce online fraud. Strong Customer Authentication (SCA) may mean that you are asked by your bank to verify your identity using a ‘second factor’ when making online payments. Visit the FCA website for more information.”

JURISDICTION: United Kingdom
CHANGE: Directions under Section 31A of the Registered Designs Act 1949, Section 123(2A) of the Patents Act 1977 and Section 66 of the Trade Marks Act 1994


Changes to patents, designs and trade marks forms made in relation to changes to the GovPay payment system.


1. The comptroller has made these Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994.


2. These Directions set out changes to the below designs forms, patents forms and trade marks forms whose use is required by rules.


3. These Directions come into force on 21 August 2021.


4. The following forms are set out in the Schedule to these Directions and are the forms which are required by the Registered Designs Rules 2006 (SI 2006/1975) as amended, the Patents Rules 2007(SI 2007/3291) as amended and the Trade Marks Rules 2008 (SI 2008/1797) as amended:


Patents forms


Patents form 1 (Request for grant of a patent)
Patents form 2 (Initiation of proceedings before the Comptroller)
Patents form 3 (Late Additions and Declarations of Priority)
Patents form 4 (Continuation of proceedings before the Comptroller)
Patents form 7 (Statement of inventorship and of right to grant of a patent)
Patents form 9A (Request a search and request a further or supplementary search under section 17(6) or section 17(8))
Patents form 10 (Request for a substantive examination)
Patents form 12 (Payment of renewal fee)
Patents form 14 (Request to reinstate a patent application)
Patents form 15 (Notice of opposition to proceedings before the Comptroller)
Patents form 16 (Application to restore a patent)
Patents form 17 (Request for opinion as to the validity or infringement of a patent)
Patents form 21 (Application to register or give notice of rights)
Patents form 23 (Request for a copy of a document or a register entry)
Patents form 34 (Grant fee for patent application)
Patents form 49 (Request to be informed of future events relating to a patent application or patent)
Patents form 52 (Request to extend a prescribed time limit)
Patents form NP1 (National processing of international patent (UK) application)
Patents form SP1 (Application for grant of a supplementary protection certificate)
Patents form SP2 (Payment of annual fees (and additional fee for late payment))
Patents form SP3 (Application for declaration of lapse or invalidity, or to revoke an extension of the duration of an SPC)
Patents form SP4 (Application to extend a supplementary protection certificate)
Patents form AF1 (Pay the application fee if it has not already been paid with form 1 or form 9A)


Designs forms


Designs form DF2A (Apply to register one or more designs)
Designs form DF2B (Application to register designs divided from an earlier application)
Designs form DF2C (Application to register a design which registration was deferred)
Designs form DF9A (Renewal of design registration)
Designs form DF12A (Record/cancel a change of ownership, licence or security)
Designs form DF16A (Change of proprietor’s name or address)
Designs form DF19A (Request to invalidate a design registration)
Designs form DF19C (Notice by proprietor to cancel a registration)
Designs form DF21 (Request for a search of the UK designs register)
Designs form DF23 (Request for a certified copy)
Designs form DF29 (Request to restore a registration)
Design right form DRF1 (Reference of dispute to Comptroller)
Design right form DRF2 (Application to be made a party to proceedings)
Design right form DRF3 (Apply to settle/adjust licence of right terms pre August 1989)
Design right form DRF4 (Vary licence of right terms by design right or copyright owner)


Trade mark forms


Trade marks form TM3 (Application to register a trade mark)
Trade marks form TM3A (Request to amend the appropriate class)
Trade marks form TM5 (Request for a statement of reasons)
Trade marks form TM7 (Notice of opposition)
Trade marks form TM7F (Notice of fast track opposition)
Trade marks form TM7G (Request to add grounds to a notice of opposition)
Trade marks form TM9 (Request an extension of time)
Trade marks form TM9R (Request for a retrospective extension of time)
Trade marks form TM11 (Renewal of trade mark registration, renewal additional class, renewal late payment)
Trade marks form TM12 (Request to divide an application)
Trade marks form TM13 (Request to restore and renew a registration)
Trade marks form TM16 (Application to record a change of ownership)
Trade marks form TM16P (Application to record partial assignment)
Trade marks form TM24 (Application to record or amend a security interest)
Trade marks form TM24C (Application to cancel a security interest)
Trade marks form TM26(I) (Application to declare invalidation)
Trade marks form TM26(N) (Application to revoke a trade mark for non-use)
Trade marks form TM26(O) (Application to revoke a trade mark other than non-use)
Trade marks form TM31C (Request for information about events relating to a UK trade mark)
Trade marks form TM31M (Request for event information relating to international trade mark (UK))
Trade marks form TM31R (Request for a certified copy)
Trade marks form TM35 (Regulations governing the use of certification or collective marks)
Trade marks form TM36 (Application to amend the regulations)
Trade marks form TM50 (Application to record a licensee)
Trade marks form TM51 (Application to remove or amend a licence)
Trade marks form TM55P (Notice of Appeal to the Appointed Person (inter parte))


5. Patents forms 3, 14, 16, 21, 52, trade mark forms, 9, 9R, 11, 13 and designs forms 9A, 29 as so set out, replace the corresponding Forms in the Schedule to the Directions made on 31 March 2021 (which came into force on 1 April 2021). The Directions made on 31 March 2021 are, to that extent, revoked.


6. Patents forms 1, 2, 4, 15, 17, 23, NP1, SP1, SP3, SP4, trade mark forms 3, 5, 7, 7F, 12, 16, 16P, 26(I), 26(N), 26(O), 35, 36, 50, 51, 55P and designs forms 2A, 2C as so set out, replace the corresponding forms in the Schedule to the Directions made on 21 December 2020 (which came into force on 1 January 2021). The Directions made on 21 December 2020 are, to that extent, revoked.


7. Patents forms 9A, 10, 12, trade mark forms 24, 31R and designs form 23 as so set out, replace the corresponding forms in the Schedule to the Directions made on 2 November 2020 (which came into force on 9 November 2020). The Directions made on 2 November 2020 are, to that extent, revoked.


8. Patents forms AF1, 34, 49, SP2, trade mark forms 3A, 7G, 24C, 31C, 31M, and designs forms 2B, 19A, 21, Design right form 1, Design right form 2, Design right form 3, Design right form 4 as so set out, replace the corresponding forms in the Schedule to the Directions made on 24 September 2020 (which came into force on 1 October 2020). The Directions made on 24 September 2020 are, to that extent, revoked.


9. The remaining trade marks and designs forms as so set out, replace the corresponding forms.”

JURISDICTION: United Kingdom
CHANGE: First UK geographical indication protected


Gower salt marsh lamb has become the first new product to be protected in Britain by the UK government’s post-Brexit geographical indication (GI) scheme.


The UK’s GI register already contains products that were protected by the EU’s GI scheme on 31st December 2020 – these include items like Champagne, Stilton cheese and Cornish pasties – but Gower salt marsh lamb is the first to be approved solely by the UK scheme. 


Awarded protected designation of origin (PDO) status, Gower salt marsh lamb originates from an area covering the Gower peninsular in South Wales.


According to the website of the Gower Salt Marsh Lamb Group, the marsh on which the lambs graze contains a natural abundance of samphire, sorrel, sea lavender and thrift which helps to give the lamb its unique flavour.


Some of the specifications of Gower salt marsh lamb as listed by the UK government include:

  • Prime lamb that is born reared and slaughtered on the Gower peninsular in South Wales
  • The lambs will be aged between four and ten months at time of slaughter
  • The lambs must spend at least 50% of their life grazing the salt marsh
  • The weight at slaughter is between 16-23kgs deadweight


There are other geographical indications currently under consideration by the UK government. These include Cambrian mountains lamb and watercress.


The UK scheme covers England, Scotland and Wales – for protection in Northern Ireland a product needs to be registered with the EU GI scheme.


Click here to search the UK’s GI database

CHANGE: Namibia joins TMclass


As of 13 August 2021, the Namibian Business and Intellectual Property Authority (BIPA) will be included in TMclass. BIPA will join with the alphabetical list of the Nice classification.


The inclusion of BIPA in TMclass brings the total number of participating national and regional IP offices, including ARIPO, OAPI, WIPO and the EUIPO, to 86.


TMclass offers users the opportunity to search for and translate goods and services to and from any of the 44 languages available as well as verifying the terms’ correct classification under the Nice classification.


The incorporation of BIPA in TMclass is a concrete result of the EU funded project called Intellectual Property Rights (IPRs) Action for Africa (AfrIPI), which is directed by the European Commission and executed by the European Union Intellectual Property Office (EUIPO).


You can find out more at www.tmdn.org and http://euipo.europa.eu/ec2 and https://internationalipcooperation.eu/en/afripi

JURISDICTION: Republic of Korea
CHANGE: KIPO’s New ‘Tech Police’ Exclusively Dedicated to Preventing Technology Leakage and Infringement

-An organizational restructuring to newly create the Technology & Design Police Division-

The Korean Intellectual Property Office (KIPO) Commissioner Yong Rae Kim announced the official formation of a separate special judicial police (SJP) group at KIPO solely devoted to preventing the leakage and infringement of key technologies that are core to national industrial competitiveness.

KIPO recently carried out a restructuring with the purpose of expanding the former ‘Intellectual Property Investigation Division’ and allowing concentrated investigations according to specific areas of intellectual property. A separate ‘Technology & Design Police Division’ was newly established to carry out investigations related to primarily technologies and designs while the ‘Trademark Police Division’ will continue with trademark investigations and the ‘Unfair Competition Investigation Division’ with administrative investigations.

Previously, the Intellectual Property Investigation Division consisted of 47 personnel to investigate illegal activities related to trademarks, patents, unfair competition, etc. In the restructuring, an additional 11 officers joined to supplement investigations regarding technology. Now, there are 22 people in the Technology & Design Police Division, 29 people in the Trademark Police Division, and 7 people in the Unfair Competition Investigation Division. In total, there are 58 personnel for the criminal or administrative investigation of intellectual property.

Overall, KIPO retains about 1,200 personnel working in examination and trial, and about 500 of them have Ph.D degrees or have licenses as lawyers or patent attorneys. In order to enable swift and fair investigations, KIPO recruited those with technical and legal expertise gained through years of experience in IP examinations and trials to form the Technology & Design Police Division. This ?Tech Police? for investigations related to technology will serve as protector of core national technologies by preventing overseas leakage and infringement amid the growing technology war between countries.

KIPO first established an SJP on trademarks in 2010 for investigations focused on the infringement of trademarks. Since then, they have processed about 53,000 reported cases and investigated approximately 4,000 individual suspects with criminal charges while confiscating 12 million pieces of counterfeit products (estimated to be worth KRW 520 billion in genuine product value) in total. KIPO has also actively responded to large-scale counterfeit enforcement and helped block the distribution of counterfeits in the field closely related to the health and safety of the public. For example, the efforts have led to the crack down of counterfeit face mask packs (worth KRW 20 billion at genuine product value, 2019), counterfeit automobile wheels (worth KRW 22.5 billion at genuine product value, 2017), health foods (worth KRW 65.2 billion at genuine product value, 2015), etc. In addition, KIPO’s investigative efforts related to technology has resulted in 415 criminal cases and the investigation of 759 individual suspects for criminal charges since 2019. This accounts for 17% of the entire criminal cases involving technology per year in South Korea.

Commissioner Kim expressed that a dedicated ‘Technology Police’ will allow investigation to be focused on cases of technology leakages overseas. He added that “we will crack down on any violation of innovative technologies that Korean companies have worked hard to create in order to foster a fair market order.””

CHANGE: SAUDI ARABIA: Nice Classification Updates Adopted


The Trademark Office of Saudi Arabia has moved away from using the 10th edition of the Nice Classification system for classifying goods and services and is following the 11th edition as of July 18, 2021. Some items remain prohibited for registration, including those claiming Class 33 (alcoholic beverages), alcoholic goods in Class 32, pork in Class 29, and Christmas trees and related products in Class 28.


The 11th edition of the international system included technical updates and took effect on January 1, 2020.


Under local filing procedures, an applicant for a trademark registration can only select from the list of goods or services pre-approved on the e-platform. Although many specifications are not completely covered by a pre-approved description, a custom written description is not an option for applicants. Accordingly, applications with an item that is not explicitly listed on the platform will not be properly docketed into the system, which would result in considerable delays. Therefore, applicants should carefully account for this, especially when faced with approaching deadlines, such as a Paris Convention right of priority deadline.


In addition, the platform no longer allows a claim of class headings in combination with all the items in the class. Applicants can either select all the class headings or claim specific items that are available on the portal, but not the combination of both.”

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