Weekly Trademark Update – Oct 2021 (1 of 3)

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We have now included all official fees for Germany as part of our IP Services offering.  If you would be interested in having these official fees imported into your system as part of our Equinox Official Fee Management Service, please send an email across to ip-services@workanyware.co.uk and we will be in touch!

Our current monitored jurisdictions are the United Kingdom, European Union, EPO, WIPO, Benelux, the Netherlands, Belgium, Germany, Australia, New Zealand, Canada, Ireland, Israel, Luxembourg and the United States of America.

All of our monitored official fees can be viewed under the ‘Official Fees’ tab of the IP Portal!

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

1. 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

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.
• 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.

1. 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.
2. 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 https://www.go.gov.sg/copyright-consult-response.
3. If passed, we expect to be able to operationalise most of the provisions in the Bill in November 2021.”

“The SME Fund, the EUIPO’s initiative that grants financial aid for intellectual property (IP) matters, will be also open throughout October.

So far, in 2021, the EUIPO has supported more than 8 000 SMEs from all over the EU. The sixth application window was launched on 1 and open until 31 October 2021. More than 16 000 trade marks and 4 400 designs have been requested at national, regional and EU level. Applications for IP pre-diagnostic services (IP Scan) are also on the rise, with 487 requests to date.

The Fund is open to small business as well as IP lawyers and representatives who can apply and can carry out the full procedure on behalf of their clients.

Small and medium-sized enterprises (SMEs) can save up to EUR 1 500 in trade mark and design basic application fees and IP pre-diagnostic services.

More on the SME Fund

The Ideas Powered for business SME Fund is a €20 million grant scheme helping European small and medium-sized enterprises (SMEs) access their intellectual property rights.

A European Commission initiative, the SME Fund is implemented by the EUIPO and the national and regional IP offices of the EU to support businesses in developing their IP strategies and protecting their IP rights, at national, regional or EU level.

Apply now“

“Hearings by video conferencing, more generous time limits – DPMA President praises amendments

Munich. The Second Act to Simplify and Modernise Patent Law (Second Patent Law Modernisation Act – 2. Patentrechtsmodernisierungsgesetz) provides for numerous amendments in patent law and in other IP procedures before the DPMA. The new provisions were promulgated in the Federal Law Gazette (part I, p. 3490) on 17 August 2021. “The reform package strengthens the outstanding position of Germany and the German Patent and Trade Mark Office as a location for intellectual property protection in comparison with other countries in Europe and around the world,” commented DPMA President Cornelia Rudloff-Schäffer.

As an important element for procedures before the DPMA, envisaged to be available from next year onwards, the Second Patent Law Modernisation Act provides for the option to participate in proceedings and hearings, and give evidence in IP procedures using image and sound transmission. This means that parties can participate in sessions by video conferencing in suitable cases to be decided by the DPMA. In many cases, this saves costs and time and can accelerate the procedures. However, it is still possible to directly participate on site. “The coronavirus pandemic has once again clearly shown to us how important it is to have flexible and tailor-made solutions at the ready for our customers,” said the DPMA President and added: “By providing the option to participate in proceedings and hearings, and give evidence online via video conferencing, we are expanding our e-government services in keeping with our mission statement as a digital service authority.”

The Second Patent Law Modernisation Act will also create uniform rules on public holidays. In the future, all public holidays applicable at at least one of the DPMA locations will be recognised for the purpose of extending a time limit. As the DPMA locations are in different federal German Länder, different public holidays are applicable there.

Another legislative amendment takes into account a long-standing request of the applicant community: The period for international applications (PCT applications) to enter the national phase at the DPMA as designated office or elected office will be extended from 30 to 31 months. DPMA President Rudloff-Schäffer said that experience had shown that many applicants made full use of the period for entry into the national phase and that a long period of decision-making was very important, especially in the PCT area, in order to assess the chances of success of a patent application entering the national phase, look for possible investors for marketing the invention or prepare formal steps.

The three amendments mentioned above will enter into force on 1 May 2022. The DPMA will first establish the necessary technical infrastructure for participation in proceedings and hearings, and giving evidence by video conferencing.

Furthermore, on 1 May 2022, the annual fees for supplementary protection certificates will be raised and trade mark law will be brought into line with the current legal situation of the Madrid system for international trade mark protection.

The main purpose of further amendments and new provisions in the IP Acts, which have already entered into force on 18 August 2021, pursuant to Article 13(1) of the Second Patent Law Modernisation Act, is to simplify and clarify procedures.

The German Patent and Trade Mark Office

Inventiveness and creativity need effective protection. The DPMA is the German centre of expertise for all intellectual property rights – patents, utility models, trade marks and designs. As the largest national patent office in Europe and the fifth largest national patent office in the world, our office stands for the future of Germany as a country of inventors in a globalised economy. Its staff of just under 2,800 at three locations – Munich, Jena and Berlin – provide services to inventors and companies. They implement federal innovation strategies and develop the national, European and international IP systems further.”

“The United States Patent and Trademark Office (USPTO) has issued a final rule to incorporate International Trademark Classification Changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

On January 1, 2022, the Nice Classification, Eleventh Edition, Version 2022 (NCL 11-2022), which will include the changes, will become effective. The changes will also be available in the USPTO’s Trademark Next Generation ID Manual on that date.”

“The Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to notify the deposit by the Government of the United Arab Emirates, on September 28, 2021, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 (“Madrid Protocol (1989)”), as amended on October 3, 2006, and on November 12, 2007.  The said instrument contained the following declarations:

– in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

– in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of the United Arab Emirates, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The Madrid Protocol (1989) will enter into force, with respect to the United Arab Emirates, on December 28, 2021″

This change will be reflected in the system’s country table on 28 December 2021.

“Case value determines whether criminal threshold is met and to what extent a penalty should be imposed. This could be the key issue for the court to determine if counterfeiting—a crime in China—is proven. New guidelines bring some much-needed clarity to how courts can calculate the value of a case.

On April 22, 2021, the Shenzhen Intermediate Court released guidelines termed the Determination of the Case Value in Trademark Criminal Cases (Q&A). These guidelines provide various questions to be considered by courts in assessing the value of a case.

The rules for calculating the case value are implemented in Article 12 of the Interpretation of Supreme People’s Court and the Supreme People’s Procuratorate, published on November 11, 2004:

• The value of the products produced, stored, transported, and sold by the offender are computed according to the price at which the genuine products are sold;
• Regarding products not yet sold, the value is “computed according to the labeled prices, or the actual average prices of the infringing products, verified through investigation”; and
• The value of products without label prices, or for which the price is impossible to ascertain, is computed “according to the middle market price of such products.”

Notwithstanding these rules, until the release of the new guidelines, it remained unclear as to how the actual sales price and the average market price should be determined. Some of the guidance provided by the Shenzhen Intermediate Court was formulated to bring clarity to this matter, as follows.

Determining Actual Sales Price of Infringing Goods

• The price of purported infringing goods as noted in financial records may be adopted if it is consistent with the defendant’s confession and other evidence;
• The price shown in sales records obtained from an online marketplace may be adopted if the other evidence (for example, the defendant’s confession, testimony, material evidence, etc.) proves that all the products sold by the defendant were counterfeits; and
• The price shown on short message service (SMS) records (of internal messages between the producers and distributors of counterfeit goods) may also be adopted if it is consistent with the data collected from seized smartphones and computers.

Determining the Average Market Price of the Genuine Goods

• When the genuine products are only available for export, the free on board (FOB) price can be used as the reference price. If still unclear, reference is then made to the international market price or the price of similar products in the domestic market; and
• When there is no identical genuine counterpart (that is, the counterfeiter simply affixes the trademark to the fake good without replicating the item), reference is made to the price of similar genuine products.
• Additionally, the price in the signed contract (between the producers and distributors of the counterfeit goods) can be considered as the price of unsold counterfeit goods.
• The value of unused spare parts to be used on or assembled into finished goods is also countable if they are (a) to be used in the production of counterfeit goods; and (b) individually packaged and bear counterfeit trademarks. The value is determined in the following order (a) the actual sales price; (b) the costs of parts; and (c) the costs for replacement or maintenance.

While the guidelines are not binding on courts, they are a good attempt to provide a framework in determining the value of the seized counterfeit goods and calculating the overall case value. It will be interesting to see how the courts use the guidelines in future cases.”

“To avoid unused marks clogging Mexico’s trademark register, a declaration of effective and real use (DoU) requirement was reintroduced into the Mexican legal framework on August 10, 2018. From that date, owners of Mexican trademark registrations were expected to file the DoU to maintain their registrations. The Federal Law for the Protection of Industrial Property (LFPPI) enacted on November 5, 2020, has maintained the DoU requirement and clarified the filing dates, which are coming up soon for many trademark owners.

According to the LFPPI, a DoU must be filed within three months after the third anniversary for trademark registrations granted on or after August 10, 2018, which is November 10, 2021. For trademark registrations granted before August 10, 2018, a DoU must be filed at the renewal date. Otherwise, the trademarks will be canceled.

For International Registrations (IRs), the DoU must be filed within three months after the date on which the World Intellectual Property Organization (WIPO) notifies the Mexican Institute of Industrial Property (IMPI) of the renewal, but only if the renewal date matches the national registration originating from the IR.  If it is a subsequent designation (and the renewal date and national registration are different), the DoU does not need to be filed, unless the national registration that derives from it has been in force for at least three years.

Complications arise when trademarks are not in use because of circumstances outside the owner’s control—for instance, a delay in the issuance of a permit from another governmental authority, which might be the case of any pharmaceutical product. The law does not take such scenarios into account, which may result in trademark owners losing rights unintentionally. This situation is not helped by the fact that the IMPI tends to have a narrow criterion when it comes to these cases.

The fact that trademark owners would be forced to lose their registration due to circumstances outside their control contradicts Article 235 of the LFPPI, which establishes that, in non-use cancellation actions, the trademark owner is not compelled to use the mark if there have been circumstances arising independently of its will. This matter could arguably be avoided if Article 235 of the LFPPI was extended for the DoU.”

“INPI published on September 21, in Revista da Propriedade Industrial (INPI’s Gazette) 2646, Ordinance No. 37/2021, which provides for the registration of position trademarks.

A position trademark is considered to be the application of a distinctive sign in a singular and specific position of a certain support, dissociated from any technical or functional effect.

Starting on October 1st, the users shall use the form for tridimensional trademarks, indicating that it is a position trademark application until the e-INPI filing system provides a specific form.

Past applications that qualify as a position trademark shall have 90 days to make the required changes. The examination of the merits of all position trademark applications will begin after the required adaptation to the Institute systems.

Check the Ordinance.“