Weekly Trademark Update – Jan 2022 (1 of 3)

“In regard to relief measures for applicants who are unable to deal with specified procedures due to “reasons beyond one’s control” or “legitimate reasons,” the Japan Patent Office (JPO) usually applies such measures based on its Formality Examination Manual, and “Guidelines Concerning Remedial Provisions Applicable after the Expiration of a Time Limit”?PDF:378KB?. Nonetheless, when it comes to relief measures for procedures negatively affected by the Novel Coronavirus Disease (COVID-19), the JPO takes the following flexible approaches until further notice (e.g. applicants are not required to submit document evidence supporting their reasons).

1. Procedures to which Relief Measures can be granted

(1) Relief measures based on “reasons beyond one’s control”

Under the laws and regulations of Japan, when applicants are unable to implement prescribed procedures due to “reasons beyond their control” within the time limits, they need to carry out procedures to apply for relief measures specified by the JPO. More specifically, please refer to “1. Procedures to which relief measures can be applied by carrying out procedures within 14 days” of II. Statutory Time Limits in ”Handling of Procedures Affected by COVID-19”.

(2) Relief Measures for “Legitimate Reasons”

Under the laws and regulations of Japan, when applicants are unable to implement prescribed procedures due to “legitimate reasons” within the time limits, they need to carry out procedures specified by the JPO to apply for relief measures. More specifically, please refer to “2. Procedures to which relief measures can be applied when conducting prescribed procedures within two months” and “3. Priority claim” of II. Statutory Time Limits in ”Handling of Procedures Affected by COVID-19”.

2. Ways to Apply for Relief Measures

(1) Relief measures for “reasons beyond one’s control”

Applicants or their representatives are required to submit documents by: (1) adding an “Others” column in documents to be submitted and describe on the documents reasons why they have not been able to implement procedures within the time limits; or (2) describing the above reasons in column “Details of statement” in written statements.

(2) Relief measures for legitimate reasons

Please submit documents for procedures that applicants were unable to implement within the prescribed periods and statements of the grounds for restoration, which describe reasons for the failure to meet the time limit.Also, when applicants request exemption from paying additional patent (registration) fees based on reasons beyond their control, please file such requests by submitting written payment form in which a column “others” is added to describe the request for exemption from paying additional patent (registration) fees based on reasons beyond their control and the specific details of the reasons (or, together with submitting the payment form (*1), please submit documents (written statements) describing that the reasons for the delay was beyond their control).

(*1) Please note that if applicants (representatives of applicants) submit documents stating the reasons beyond their control after submitting the payment form, the JPO cannot recognize the reasons (under Article 69 (4) of the Regulations under the Patent Act, Article 21 (3) of the Regulations under the Utility Model Act, Article 18 (3) of the Regulations under the Design Act, and Article 18 (8) of the Regulations under the Trademark Act).

3. Examples of Reasons of Not Complying with Time limits

The following are case examples in which applicants or their representatives were not able to implement procedures:

• Applicants or their representatives have been infected with the COVID-19;
• The offices of applicants or their representatives have been closed due to those who were infected with the COVID-19;
• Since local governments in regions where applicants or their representatives reside issued an order of or request for restrictions on movement due to the COVID-19, access to the office is severely restricted;
• The offices of applicants or their representatives have fallen into difficult situations to continue to operate due to negative impacts caused by the COVID-19;

Example for description of reasons (Please describe the circumstances with dates that prevented applicants from carrying out prescribed procedures within the time limits.)

“Due to the negative effects of the COVID-19, Company XX for which applicants work/Office YY where representatives of applicants work had been closed (and forced to work at home) from ??, 2020, and the applicants/the representatives were not able to implement their prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ??, 2020, please recognize ?? as an effective procedure.”

Description Example of Request for Exemption from Paying Additional Registration Fees

“[Others] Due to the negative effects of COVID-19, Company XX for which applicants work/Office YY where representatives of applicants work had been closed (remote work) from ?? to ?? in 2021, and the applicants/the representatives are (were) not able to implement the prescribed procedures for paying patent (registration) fees within the time limits. Nonetheless, since it has become possible to implement the procedures from ??, 2021 within/after the late-payment periods (*2), the applicants/the representatives file a request for exemption from paying the additional registration fees.”

• *1 Please note that depending on the procedures, there is a time limit that the critical date is the date on which the procedures become available. For further details about time limits, please refer to “II. Statutory Time Limits” in Handling of Procedures Affected by COVID-19.
  Also, the dates on which the procedures become available are the dates on which the applicants/the representatives become ready to submit documents to the JPO to implement the procedures.
• *2 Only in case the reasons for the delay are legitimate reasons.

4. Documentary Evidence

In general, when applying relief measures to applicants or their representatives who were unable to implement prescribed procedures within the time limits due to reasons beyond their control or legitimate reasons, the JPO asks them to submit documentary evidence supporting the fact written in their documents. However, only in case they have been negatively affected by the COVID-19, the JPO will not require them to submit any documentary evidence until further notice.

5. Granting of Relief Measures

Except cases in which it is difficult for the JPO to consider that the time limits for procedures have been affected by the spread of the COVID-19, the JPO will, until further notice, grant relief measures for a certain period of time to cases in which applicants or their representatives describe the fact that their procedures have been negatively affected by the COVID-19.”

“From 1 January 2022, the structure of the Estonian Patent Office will change.

The Office will now have an Intellectual Property Law Department in addition to the Patent Department, Trade Mark Department, and Registry Department. The Financial and Administrative Department will be consolidated into the Cooperation and Support Department to be established at the Estonian Competition Authority.”

“Dewan Negara today passed three more bills, namely the Patent (Amendment) Bill 2021, the Copyright (Amendment) Bill 2021 and the Geographical Indications Bill 2021.

The bills were approved after the third reading by Deputy Minister of Domestic Trade and Consumer Affairs, Datuk Rosol Wahid.

The Patent (Amendment) Bill 2021 contains 69 amended clauses that have taken into account Malaysia’s commitments in the TRIPS Agreement on public health, the Regional Comprehensive Economic Partnership Agreement (RCEP) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). This amendment is also implemented to comply with the provisions of the Budapest Treaty which will allows Malaysia to become a member of the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of the Patent Procedure.

Meanwhile, when tabling the Copyright (Amendment) Bill 2021 Rosol said the amendments to the act was to ensure that the copyright law provides more efficient and effective protection in line with current demands and to fulfil the needs of the business community and stakeholders.

He said the Act 322 amendment provides suitable copyright protection including implementing allowed exceptions of rights and international ratification.

The amendment is also to prepare Malaysia to join the Marrakesh Treaty to Facilitate Access To Published Works For Persons Who Are Blind, Visually Impaired Or Otherwise Print Disabled (Marrakesh Treaty) to acknowledge the rights of visually impaired individuals to obtain works in accessible format copy.

Meanwhile, when tabling the Geographical Indications Bill 2021, Rosol said the bill had 15 sections containing 101 clauses per schedule, adding that the Geographical Indications Act 2000 (Act 602) was enacted in line with the need to protect registered or unregistered geographical indications in Malaysia, in line with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement which was effective on 1st January 1995.”

“All INPI services will continue to be exclusively available online, in accordance with the provisions of Decree-Law No. 119-A/2021, of 22 December.

In the context of exceptional and temporary measures for the prevention and control of infection by COVID-19, until June 30, 2022, all INPI services will continue to be exclusively available online, in accordance with the provisions of Decree-Law No. 119-A /2021, of December 22 .

According to the aforementioned Decree-Law, “the advantages that resulted for citizens and companies, as well as for the operation of the services, of the various exceptional and temporary measures designed to enable and encourage the practice of acts by means of remote communication within the scope, namely, of the registration processes and procedures and procedures conducted by the National Institute of Industrial Property (INPI).”

The document states that “these measures continue to be fully justified, by reducing the need for travel and the physical presence of interested parties in the facilities of the services or bodies.””

“On 9 December 2021, the CARIFORUM Directorate and the CARIFORUM Intellectual Property and Innovation Project, CarIPI, will be launching a new consultation tool, Caribbean TMclass, a regional interface of TMclass. This classification tool developed by the European Union Intellectual Property Office (EUIPO) and IP Offices of the EU Member states, is already used by more than 80 IP Offices worldwide. Caribbean TMclass is multilingual and provides free-of-charge access to the lists of terms accepted as suitable to identify goods and services for the purposes of the registration of marks by participating Caribbean IP Offices.

Please see the following link for more information on the Caribben Trademark Tool“

“From December 13, 2021, all intellectual property intervention requests must be filed and managed electronically. Any new application, as well as extensions or modifications to existing applications, is introducing into the  portal  Intellectual Property Enforcement Portal  (IPEP).

From this date, paper applications are no longer accepted.

More information on the website of the Customs and Excise Administration: https //: douanes.public.lu“

“2022 is a pivotal year for OAPI’s regional industrial property protection system, with the entry into force on January 2 of Annexes 3, 4 and 5 of the new Bangui Agreement. These annexes relate to trademarks, industrial designs and trade names.

At OAPI, the staff is ready for this deadline, which will allow daily implementation of innovations in registration procedures, maintenance in force and defense of rights relating to these three industrial property titles. For some of these titles, the cost of the service has been reduced.

For example, the filing fee for the application for protection of a trademark which until December 31, 2021 is 400,000 or 450,000 F CFA (depending on whether it is in color or not), this cost is reduced to 360,000 CFA francs for ten years with effects on the 17 member states of OAPI.
The other major innovation that OAPI and its users will experience in 2022 is the introduction of electronic filing of industrial property title applications (trademarks, industrial designs, etc.). Thus, the procedure for obtaining industrial property titles becomes simpler and faster to the satisfaction of users.

All these innovations figure prominently in the Organization’s 2018-2022 strategic plan and fully participate in the desire of the Administrators to make OAPI a modern and efficient intellectual property office at the service of the development of Member States.”