Weekly Trademark Update – Dec 2021 (3 of 3)

“CIPA welcomes the announcement of a landmark trade deal with Australia and its intellectual property (IP) provisions which will support the UK economy by encouraging innovation and creativity.

We are pleased to see the commitment to protect UK brands and trade marks through a commitment to an equitable and correspondent approach to Geographical Indications (GIs). GIs are IP rights for products with qualities or characteristics attributable to a specific geographical origin. If Australia introduces bespoke GI schemes for spirits and agri-foods, the UK will be able to put forward GIs for potential protection subject to Australia’s legal procedures.

The Government has said that it will respect the UK’s important, existing international obligations on intellectual property in its trade negotiations and the agreement with Australia is fully in line with this commitment. We look forward to participating in the detailed review of the agreement.

CIPA fully supports the Government’s global trade ambitions and looks forward to future trade announcements which will further strengthen the UK’s position as a world leader in IP.”

“Ukrainian trademark holders looking to protect their marks abroad can now apply online through the Madrid e-Filing service.

Starting today, 20 December 2021, the Ukrainian Intellectual Property Institute (UKRPATENT) will be giving access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will now have the possibility to file international applications online.

An integrated key feature includes in-app access to the Madrid Goods & Services Manager that allows users to check the classification of terms in their list of goods and services.

The adoption of Madrid e-Filing by the IP Office of Ukraine brings the number of users of this WIPO solution to a total of fifteen.

Moreover, the adoption of Madrid e-Filing allows Ukrainian brand owners to make use of another main feature. Now, they will have the possibility to communicate with their Office of origin and immediately receive and respond to irregularities issued by WIPO electronically. This feature is available to all participating Offices and represents a great advantage to brand owners, since it helps to save a significant amount of time in the processing of international registrations.

Other key benefits

• Reduced application irregularities associated with manual data input, as the national IP office’s database prepopulates key information
• Direct access to the Madrid Goods & Services Manager for listing goods and services and checking acceptability of terms across 40 contracting parties of the Madrid Protocol
• A streamlined certification process at the Office of Origin
• Synchronized filing with WIPO
• Live application status displayed in the e-Filing dashboard
• One service covering the whole registration process

How to use the Madrid e-Filing service

1. Log on to the website of the Ukrainian Intellectual Property Institute and select “Electronic application for international registration (Madrid e-Filing)”.
2. Enter the basic application/registration number and check the fields prepopulated with data from records from UKRPATENT.
3. Select the designated Contracting Parties and goods and services for protection.
4. Update mark, holder, representative and language correspondence details.
5. Pay the “handling fee for proceedings of the applications under the Madrid Protocol” to UKRPATENT as described and the fees to WIPO using a Current Account at WIPO, a credit card or PayPal.
6. Upon certification by UKRPATENT and the confirmation of payment, the system sends the application directly to WIPO for registration.
7. Respond to irregularity letters when necessary.
8. Receive your international registration number.

Find out more

• Visit the website of the Ukrainian Intellectual Property Institute (UKRPATENT).
• Learn more about how your IP Office can implement Madrid e-Filing
• Send us your questions“

“On 26 November 2021, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) presented to the public the draft amendments to the Rules and Regulations Governing Inter Partes Proceedings (Inter Partes Rules).  IP Law practitioners from various law firms attended the public consultation.

The strategic measure is in line with Director General Rowel S. Barba’s BRIGHT agenda, particularly, “Raising the ante for customer service” and “Transforming IPOPHL into a full digitalized agency”. The draft amendments will modernize and further streamline the procedures in oppositions (to trademark registration) and petitions for cancellation of patents and registrations of utility model, industrial design and trademark. The measures implemented by the BLA since last year to ensure the continuity of operations, access to and delivery of services during the Covid-19 pandemic are incorporated including e-Filing, e-SOA and online payment of fees, the conduct of online or virtual hearings and conferences, and e-Service of notices, interlocutory orders, decisions and final orders.

Making it easier for parties to comply with the requirements in filing oppositions, petitions, and answers [to the opposition or petition] is also one of the objectives of the amendments. Streamlining includes rationalizing the number of and the timelines for extensions to file pleadings and other compliances.

The BLA aims to implement the amendments in June 2022, thus giving law firms and IP practitioners ample time to get familiar with the changes in the rules.  The draft amendment to the Inter Partes Rules is still posted in the IPOPHL website. Those who are interested to submit comments or suggestions have until 31 December 2021 to do so through email address:  vanj.dapon@ipophil.gov.ph“

“The United States Patent and Trademark Office has issued a new examination guide titled “Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020.” This guide explains the procedures for the new ex parte expungement and reexamination proceedings for cancellation of a registration, in whole or in part, when the required use in commerce of the registered mark has not been made.

The guide is available on the Trademark examination guides webpage. Please send questions about the guide to TMPolicy@uspto.gov.”

“On Saturday, December 18, 2021, the United States Patent and Trademark Office updated the Trademark Electronic Application System (TEAS) and other IT systems to implement the provisions of the Trademark Modernization Act of 2020 (TMA) that went into effect on that date. As part of these updates, a new Petition for Expungement or Reexamination form is now available in TEAS.

To learn more about this federal trademark law change, visit the TMA page on the USPTO website.”

“Availability of our Information Centre and our filing services over the festive season.

Christmas

Our Information Centre will be closed on Friday 24 December until 9am on Tuesday 29 December 2021. You should not rely on other direct line numbers being answered during this period.

Any forms or documents filed during this period will receive their legally acknowledged filing date, but may not be processed until the next working day. Please continue to file through our website, by post or e-mail forms@ipo.gov.uk.

New Year

Our Information Centre will be closed on Friday 31 December 2021 until 9am on Tuesday 4 January 2022. You should not rely on other direct line numbers being answered during this period.

Any forms or documents filed during this period will receive their legally acknowledged filing date, but may not be processed until the next working day. Please continue to file through our website, by post or e-mail forms@ipo.gov.uk.”

“The Copyright Act, perplexing to many, is a series of statutes that are closely related to people’s daily lives. Rapid development in society and Internet technology has led to increasingly diverse and complicated copyright issues in people’s everyday lives and work. TIPO has thus compiled the Copyright FAQ e-Manual by collecting common copyright issues-related public e-mail inquiries in the past three years. Through the detailed explanations of twelve FAQs, the general public can gain a deeper understanding of the Copyright Act, so as to foster respect and ensure protection for intellectual property rights.

This Manual has been published on the TIPO website for public reference.”

“New changes have been made on IP protection over the past year, with the infrastructure redesigned at the very top, more concrete rules to follow for law enforcement, whole-chain of protection improved, systematic reform deepened, international cooperation and competition advanced and national security issues in the IP filed addressed, according to the fourth-quarter press conference of the China National Intellectual Property Administration (CNIPA) on December 8, which paints a panoramic picture of CNIPA’s efforts in transforming China from a major IPR importer into a major IPR creator, from pursuing IPR quantity to improving quality?hereinafter referred as the Two Transformations).

Comprehensively strengthening IP protection

“CNIPA has been beefing up IP protection since the end of 2020, which vigorously speeds up the materialization of the Two Transformations,” said Hu Wenhui, Deputy Commissioner of CNIPA’s Patent Office and Director General of CNIPA’s General Affairs Office.

Specific measures have been taken this year to heighten IP protection in an all-round and multi-tiered way, providing strong support for the rapid progress of the Two Transformations. The Outline for Building a Country Strong on IPR (2021-2035) and the 14th Five-Year National Plan for IP Protection and Application were completed and issued. The newly revised patent law was implemented and the framework and contents of the geographical indication law were drafted to further construct a comprehensive protection work system. Six aspects including 16 measures were made to deepen the reform in streamlining administration, delegating power, improving regulation, and upgrading services. Special campaigns were carried out to crack down on irregular patent applications and malicious trademark registrations. Decisive progress was made in advancing China’s accession to the Hague Agreement Concerning the International Registration of Industrial Designs. The China-EU GI agreement was effectively implemented. The independent research and protection of core technologies related to national security were enhanced.

Notable results were achieved in multiple areas. For example, with  harsh actions on irregular patent applications and malicious squatting of trademarks as an example, CNIPA, since 2021, has notified local authorities of 4 groups of 815,000 patent applications assessed as irregular, and revoked 93.1% of all applications of the first three groups; sanctioned 376,000 malicious trademark registration applications. In order to severely crack down on irregular applications from unlicensed patent agencies, CNIPA also issued the Notice on Facilitating “Blue Sky” Special Rectification Actions to direct local authorities to punish nearly 200 unlicensed agencies across the country, having imposed combined fines exceeding 10 million yuan.

Starting a new journey of high-quality development

As of date, China is experiencing the Two Transformations. New breakthroughs in IP field have made remarkable contributions to the country’s high-quality development, according to the press conference.

“China’s export and import volume of IP royalties approached 280 billion yuan in the first three quarters, with the export growth rate spiking at over 27%. In addition, China’s ranking rose to No.12 in WIPO’s (World Intellectual Property Organization) the Global Innovation Index Report 2021 issued, hitting a new high. Besides, from January to October, the national patent and trademark pledge financing amounted to 240.77 billion yuan with a year-on-year increase of 50.6%, surpassing the total amount of last year, ” said Lei Xiaoyun, Director General of CNIPA’s IP Utilization and Promotion Department. “The above data clearly defines the progress in advancing the Two Transformations in the outgoing year. ”

IP protection has been continuously strengthened, deepened and refined centering on the theme of high-quality development. Zhang Zhicheng, Director General of CNIPA’s IP Protection Department, introduced that CNIPA has taken actions in four aspects to enhance the high-quality development of IP administration at the national level. Among them, CNIPA accelerated the building of the index, policy, statistical and assessment systems for  high-quality development by constructing a patent quality improvement project, a trademark branding strategy and GI protection demonstration zones as well as a national GIs application promotion project. Also, the “high-value invention patents owned by per 10,000 heads” aim was listed as one projected target of the Plan.

In addition, both the CNIPA and the local administrations all chip in to build an IP public service system that can facilitate access  to resources and benefit the people, help all branches of the industrial economy operate stably and sustain the high-quality economic and social development. According to Wang Peizhang, Director General of CNIPA’s IP Public Service Department, the national IP public service system has taken an initial shape under the full coverage of IP information public service centers in provinces (regions, municipalities) and vice-provincial cities, and cities separately designated. The coverage of prefecture-level comprehensive public service centers increased to 33%. Also, in cooperation with the WIPO, CNIPA has deployed 101 Technology and Innovation Support Centers (TISCs), having established presence in all provinces. The first group of registered national public service stations amounted to 88 and crucial service stations nationwide reached 269.

“CNIPA will treat quality as the main theme and must-do task of the IP development in the new era based on the active coordination, simultaneous multi-level efforts and coordinated advancement of the entire chain to forge a new path for high-quality development and create a new situation of building a country strong in IPRs,” said Zhang.”

“The Department of Registrar of Companies and Intellectual Property, in cooperation with the European Union Intellectual Property Office (EUIPO), in its continuous effort to upgrade the services offered, hereby announces a scheduled downtime of the Trademarks e-filing service on Thursday 23/12/2021 from 08:00 am – 10:00 am for upgrading reasons.

The System upgrade will result to the public access to the following applications:

• ??03 – Amending classification of products and services
• ??04 – Reply to Office’s objections
• ??05 – Completion of procedures
• ??06 – Limiting products and services of an application
• ??09 – Correction of obvious errors in publication
• ??11 – Extension of deadline/suspension of procedure (Application for Registration)
• Addition of «Solemn Declaration” form

The upgrade will also include user access to Payment History.”