Weekly Trademark Update – Sept 2021 (1 of 3)

“Information to help you protect, manage and enforce your intellectual property (IP) rights in?China.

This page provides practical information to help you make the most of your IP when doing business in?China.?

Please note that the page relates to mainland China only; Hong Kong has a separate IP system.

The China IP Attaché team based in Beijing and Shanghai is also available to support UK businesses in navigating the Chinese system.

The China National Intellectual Property Administration (CNIPA) is the authority for IP rights including patents, designs, trade marks and geographic indications.

The National Copyright Administration of China (NCAC) is the authority for copyright.

Trade marks

The Chinese trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in China you have two options:

1. Apply yourself or through a representative (e.g. a trade mark agent) directly to the CNIPA. On average it takes 7-8 months for a trade mark to be granted.
2. Make an international trade mark application and select China as a designated country. This can reduce the cost and effort of applying for trade marks in multiple countries, but will take longer than applying direct to CNIPA. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

You will need to consider whether to register in Chinese characters and pinyin (the Romanised alphabet).

China has a systemic problem with ‘bad-faith’ trade marks – see the relevant factsheet in the ‘More Information’ section for further support.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in China. China also provides protection for utility models (for up to 10 years) and design patents (for up to 15 years). Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. Design patents protect the look of a products and are much like the UK’s registered design rights. All patent rights in China are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in China you have two options:

1. Apply yourself, or (recommended) through a representative (e.g. a patent agent), directly to the CNIPA.
2. For inventions and utility models, you can also apply under the terms of the Patent Cooperation Treaty (PCT), which is usually easier and quicker.

Good to know

China operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Ensure that your patent application is translated accurately into Chinese when filing in China. Submission of faulty translations could make it harder to get your patent granted or enforce it in the future.

China allows you to apply for both invention and utility model patents for the same invention. You might want to consider filing an invention patent and a utility model patent simultaneously for the same subject matter. Utility models are cheaper to apply for and often quicker to get granted.

Designs

Designs are covered by the Chinese Patent Law with protection for a maximum of 15 years.

To protect the appearance, shape or configuration of your product, you can apply for a design patent yourself, or (recommended) through a representative (e.g. a patent agent), directly to the CNIPA.

Good to know

As of 1 June 2021, China has introduced partial design protection though until the change is fully implemented applications can only be made in paper form or offline.

Copyright

China’s copyright framework provides all of the basic protections required by international law. Copyright owners do get automatic protection through Chinese law. However, it is recommended that copyrighted work is filed (known as ‘copyright recordal’) at the Copyright Protection Centre of China for a fee. Copyright recordal is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Good to know

For software, parts of source code may be redacted (obscured) in the copyright recordal to protect trade secrets.

Enforcing your rights

The main options for enforcing your IP rights in China include administrative action, customs seizure and civil litigation. The State may prosecute offenders under the Criminal Law for several types of severe infringement.

Administrative action – the first step is to file a complaint with the local office of the appropriate administrative organisation. Trade mark and counterfeiting cases are often straightforward, especially where the infringement itself is unambiguous. For those involving patents and copyrights, however, the administrative authorities’ enforcement powers are less clear-cut. You will also need to collect evidence in order to trigger a raid.

Civil litigation – an action may be started in a local court. There are several advantages to this, including the deterrent effect of a high-profile court case and the potential for the award of damages. However, civil cases usually mean a longer timescale and greater bureaucracy.

The customs system in China is unusual for its ability to intercept fakes on export as well as import. China Customs relies on the intelligence it receives about illegal shipments. You can help them by pre-filing recordal of your IP rights with Customs, and passing on the names of known counterfeiters, routes and the details of genuine goods.

More information

The IPO provides more specific information on registering and protecting your IP in China.

Visit the exporting to China pages for more information about doing business in China.

The China Britain Business Council (CBBC) offers intellectual property protection advice, enforcement support and access to IP professionals, to businesses entering and growing in the China market.”

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Brazil.

This page provides practical information to help you make the most of your IP when doing business in Brazil.

If you plan to do business in Brazil, or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our Brazil IP Attaché, based in the Consulate General, Sao Paulo.

The National Institute of Industrial Property (INPI) is the body responsible for operating the patent, utility model, industrial design and trade mark system in Brazil.

The Copyright Office of the National Library is the main registration authority of copyright.

The information on these sites, however, is predominately in Portuguese.

Trade marks

The Brazilian trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’s products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Brazil you have two options:

1. Apply through a representative (e.g. a trade mark attorney) directly to INPI. Any applicant from outside Brazil must apply through a qualified attorney.
2. Make an international trade mark application and select Brazil as a designated country. The international application route can be quicker in Brazil as it imposes an 18 month deadline to evaluate your request. More information on international trade mark can be found in the international trade mark protection page.

Good to know

Documents submitted to INPI must be in Portuguese or provide a translation within 60 days.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in Brazil. Brazil also provides protection for utility models for up to 15 years. Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. All patent rights in Brazil are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in Brazil you have two options:

1. File an application through a representative (e.g. a patent agent) directly to INPI.
2. File an international patent application and select Brazil as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the international patent protection page.

Good to know

Brazil operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent.

Ensure that your patent application is translated accurately into Portuguese when filing in Brazil.

INPI currently has a large backlog of patent applications, this can lead to significant delays in granting patents.

Designs

In Brazil, you can protect the appearance, shape or configuration of your product by applying for an industrial design right at INPI. If your application meets the legal requirements (for novelty, originality and is able to be reproduced at scale), it will be registered immediately.

Good to know

The registration for an industrial design is valid for 10 years from the filing date and can be extended for three consecutive five-year periods.

Copyright

As in the UK, copyright is an automatic right under Brazilian law.

Copyright in Brazil protects original artistic, literary and scientific expressions, text, music, works of art such as paintings and sculptures, as well as technological works, for example, computer programs and electronic databases.

As a general rule, the Copyright Law sets the duration of economic rights for a period of 70 years counted from 1 January of the year following the author’s death.

Good to know

Although protection is automatic, you may want to register your work with the Copyright Office of the National Library in Brazil. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.?

Enforcing your rights

If you believe that someone is using or benefitting from your IP rights without your consent, it is advisable to seek legal advice at an early stage.

Issues with IP infringement can often be dealt with directly with the alleged infringer. For example, using mediation, ‘cease and desist’ letters or through a licensing arrangement. If you do choose to take legal action, there are two main levels at which IP rights may be enforced in Brazil:

(a) Civil action – a legal expert will be able to help you navigate the court system and build a civil case against someone infringing your IP rights. You may be able to use this route to stop the person or business using your IP and seek compensation for damages. Brazil has no specialist IP courts, so ordinary civil courts deal with IP cases.

(b) Criminal prosecution – some infringement actions may also constitute a criminal offense under Brazilian law. A criminal complaint must be preceded by a search and seizure action, which aims to collect evidence rather than halt the infringement. You may wish to seek legal advice for further information on the process.

More information

The IPO provides more specific information on registering and protecting your IP in Brazil.

Visit these pages for more information about doing business in Brazil and to report a market access barrier on IP in Brazil. “

“Holders of international registrations, which contain a designation of the European Union (EU) that were pending a decision by the European Union Intellectual Property Office on January 1, 2021, must apply for a national trademark registration with the United Kingdom Intellectual Property Office (UK IPO) on or before 30 September, 2021 to preserve the date of the designation of the EU.

The UK IPO is encouraging all those who wish to file such national trademark applications to do so as soon as possible.

Please visit the UK IPO website for more information.”

“Due to scheduled maintenance on our internal system, Madrid System online services will be unavailable from Friday, August 27 (from 4 p.m.) to Sunday, August 29 (Geneva time).

Which services will be disconnected?

You will not be able to access the following applications:

• Subsequent designation
• Limitation
• Renewal
• Management of Representative
• Change in Holder Details
• Renunciation

For that reason, we suggest that you plan your requests submissions ahead of time should you choose to use our online services.

As an alternative, you will still be able to submit official forms of the Madrid System to your Office of Origin or to WIPO through Contact Madrid for all of the transactions listed above.

Are there any other services that will be impacted?

Madrid Monitor, Madrid Portfolio Manager and the Madrid Office Portal will also be partially disrupted. You will not be able to use real-time status features, nor to download up-to-date documents.

For that reason, we suggest that you plan ahead of time, should you require the use of any of these features.

All other functionalities of Madrid Monitor will remain available. You will still be able to access the interface of the Madrid Portfolio Manager and of the Madrid Office Portal, apart from the features and transactions aforementioned.

All other online tools will be accessible as usual.”

“1. On July 29, 2021, the Director General of the World Intellectual Property Organization (WIPO) received a communication from the Office of Belarus withdrawing the notification made by Belarus under Rule 40(6) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Regulations), with immediate effect.

2. Consequently, as from the above-mentioned date, the Office of Belarus can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations. ”

“Small and medium-sized companies now have the opportunity to receive financial support in order to make use of their intellectual property and to develop control over it. The support is granted by the European Union Intellectual Property Office (EUIPO).
You can get financial support for trademark and design application fees and for the IP pre-diagnostic service (IP Scan).

• The trademark and design applications can be national applications filed with the Finnish Patent and Registration Office (PRH) or EU trademark and Community design applications filed with the EUIPO. National trademarks and design rights provide protection in Finland, and EU trademarks and Community designs provide protection throughout the EU.
• The IP pre-diagnostic service involves intellectual property experts reviewing your company’s present state, development objectives, products, and services, and studying your company’s IP-strategy. The service can help you understand how you can develop your company’s IP strategy in the future.

Read more about the IP pre-diagnostic service.
The reimbursement is paid retrospectively and it covers 50% of your basic application fees and 75% of the price of the IP pre-diagnostic service. The maximum amount of financial support payable to each company is 1,500 euros.

How and when to apply

There are five designated application periods in 2021. The next application period begins on 1 September 2021.
See the exact dates for the application periods.
You can apply for and receive financial support for application fees and for IP pre-diagnostic services, once for both. Please note that the maximum financial support covers both application fees and IP pre-diagnostic services.

Read the checklist for applicants before you apply.
To receive financial support:

1. Apply for support using the EUIPO online filing service. Wait for a positive grant decision.

2a. If you are applying for support for trademark and design application fees, file your trademark and design applications within 30 days of receiving a positive grant decision on the support from the EUIPO.

2b. If you are applying for support for the IP pre-diagnostic service, read the service description and further instructions on our website before you apply. 

3. Submit your request for reimbursement to the EUIPO before 31 December 2021.

Read further instructions on the EUIPO website.
Read questions and answers at the EUIPO website.“

“The government will pay up to £5,000 to help SMEs protect and commercialise their IP as part of a new strategy to support a post-pandemic recovery.

Available to SMEs and innovative businesses, the IP Access grants can be put towards a number of costs including professional fees for IP services and management of IP assets.

The scheme intends to provide businesses with the confidence and financial support to invest in their IP, allowing them to develop and grow securely.

This is an extension of the UK IPO IP Audits Plus programme. It provides businesses with additional funding to take forward some of the recommendations provided within the IP audit report.

Companies that have completed a part-funded IP audit between April 2020 and March 2022 with an IP audit plus partner are eligible to apply. This money can be used to cover service costs related to:

• The management of IP assets
• Commercialisation of IP
• Licensing and franchising agreements
• IP insurance
• IP valuation
• Tax relief advice
• Professional fees for IP services in the UK and abroad

It cannot be used for the official fees for filing trade mark, registered design or patent applications.

Applications for IP Access are now open and will remain open until 12pm on the 31st March 2022.

For more information, please contact ipaccess@ipo.gov.uk“

“IPO CZ has started the transfer of its email addresses to a new domain, upv.gov.cz. Clients may receive email messages from addresses in that domain. The change will be gradual until the end of 2021.

We would like to ask the public to primarily communicate with the Office using the domain upv.cz.”

“The EU-funded Twinning Project for institutional cooperation between Public Administrations – “Establishing Efficient Protection and Control System of Geographical Indications (GIs) in Georgia”, was closed in solemn ceremony today.  The main beneficiary of the Project was the National Intellectual Property Center of Georgia Sakpatenti, which was given an opportunity, through sharing experience and knowledge of leading countries in this field, to create the administrative and institutional mechanisms, which will strengthen the protection and control system of geographical indications in Georgia and facilitate capacity building and deepening the knowledge in the mentioned field.

At the event, the report of the work carried out by Georgian and foreign experts of the relevant field during two years was presented to the stakeholders. Within the Project, the current legislation of Georgia on geographical indications and its compliance with the EU legislation were assessed. In addition, resources of the producers and associations of appellations of origin and geographical indications, their necessities, mechanisms of the state control and competence of the executive bodies were evaluated and determined, as a result of which specific necessities were identified.

In order to ensure effective functioning of the geographical indications system, draft amendments to the “Law of Georgia on Appellations of Origin of Goods and Geographical Indications” were prepared according to the experts’ recommendations. The amendments include definition of the state control mechanisms for appellations of origin and geographical indications, identification of the basic elements of specifications of goods, specification of the procedures of conducting examination, determination of the role of producers’ unions, taking into consideration legal mechanisms of protection and other significant issues. On the basis of the draft Law, by-laws, guidelines and instructions were developed.

Based on the necessities of public agencies and producers’ unions and associations’ trainings, working meetings, certification simulations and various activities were held for improving qualification. In cooperation with the local producers, potential geographical indications – “Georgian Hazelnut”, “Racha Ham”, “Gurjaani Peach” and “Acharian/Georgian Tangerine” – were revealed and the specifications of these products were prepared for the purpose of their registration.

A draft was also prepared in order to establish the National Commission on Geographical Indications, which will have the analogous role and functions compared with the entity operating at the Ministry of Agriculture of Italy and the National Institute for Origin and Quality of France (INAO), leading in this field. The Commission shall ensure the use of the so-called two-stage system of the registration procedure, namely, participation of the Commission in the examination process and full study of an item marked with a geographical indication.

To eliminate the facts of counterfeiting of Georgian geographical indication products in the digital world, experts studied the mechanisms of control and rights enforcement and developed a plan, which includes signing agreements of cooperation with Internet platforms Amazon, Ebay, Alibaba and Rakuten.

In order the consumers to identify the goods with specific quality, logos of geographical indications and appellations of origin were developed. In addition, to raise public awareness, social videos, tutorials on registration, certification and control were prepared and a special platform on geographical indications – a website of geographical indications – was created.

The above-mentioned project was a component of the sectoral support from the European Union to Georgia, which was launched on November 7, 2019, and was financed by 1.5 million EUR by the European Union. The implementation of the project was entrusted to the national services of the European Union member states, functioning in the relevant field: the Italian Ministry of Agricultural Food and Forestry Policies (MIPAAF) and the Ministry of Agriculture and Food of France. On the part of Georgia, the Ministry of Agriculture of Georgia, the National Wine and Food Agencies, the Customs Department of the Revenue Service of the Ministry of Finance, the Investigation Department, the Monitoring Service as well as research centers, laboratories and producers were involved in the project implementation.

A geographical indication is an effective tool which serves to increase awareness and competitiveness of the unique local products related to the natural environment and cultural heritage. Development of the system of geographical indications and intellectual property, in general, is one of the main priorities of the Government of Georgia and its protection represents one of the significant issues within the Deep and Comprehensive Free Trade Area Agreement (DCFTA) with the European Union.”

“Svanetian Tower, Qvevri, Grape Cluster, Golden Fleece are the elements of the logo of Georgian Geographical Indication created for the purpose of identification of products protected by the geographical indication and an appellation of origin. The logo was designed by advertising company “Abk communication” and was inspired by the lower stone of the north window of the “Abuletaurt” fortress in village Kistan, Khevsureti.

By means of pictography, the world-known Georgian symbols are depicted on the logo, which allows identification of the country, and accordingly the place of origin of a product. Two, bilingual logos of two colors – green and red – were created to be placed on the packaging of all goods protected by registered geographical indications and appellations of origin. The logos bear inscriptions “Georgian Geographical Indication” and “Georgian Appellation of Origin”. The company also developed the instruction of using the logo.

The obligation and rule of use of logos by producers are  formulated in the draft amendments to the “Law of Georgia on Appellations of Origin of Goods and Geographical Indications”, prepared within the EU-funded Twinning Project for institutional cooperation between Public Administrations – “Establishing Efficient Protection and Control System of Geographical Indications (GIs) in Georgia”.

Creation of logos is a part of the activities aimed at raising awareness on geographical indications and appellations of origin.

Geographical indication is the name of a geographical area, which is used to designate the goods the specific features and quality of which are attributable to the particular environment of this geographical area (soil and water composition, climate, landscape and other natural  characteristics) and human factor  (traditional knowledge and experience of production existing in the local population). Geographical indications play a significant role in the regional development of countries, which creates new jobs and increases incomes, reduces work force drain and stimulates attraction of new manpower, also increases the region awareness and facilitates development of rural tourism.”

“The Intellectual Property Registry makes available the new electronic notification service, through the electronic window of the VERPI Intellectual Property Registry.

The purpose is to facilitate and expedite communication between the user and the Intellectual Property Registry.

With this tool you can notify from any device connected to the internet and from anywhere. You can register at ventanilla.rpi.gob.gt .

This is another advance in the line to achieve digital transformation in intellectual property services for the benefit of users of this registry.”

The following update has been translated from Spanish.

“The Spanish Patent and Trademark Office OA (OEPM) has recently signed four collaboration agreements, each lasting four years, with the following platforms and technological associations:

• Research Association of the Technological Institute of Plastic ( AIMPLAS )
• Spanish Technological Platform for Manufacturing Sectors ( PLATECMA )
• Association of the Spanish Technological Platform of the CO? ( PTECO2 )
• Technological Platform for Concentrated Solar Energy ( Solar Concentra ) and Spanish Association for the Promotion of the Thermosolar Industry ( PROTERMOSOLAR )

The purpose of these agreements is to promote the competitiveness of Spanish industry in the field of innovation and its protection through Industrial Property (hereinafter, IP). For this, the corresponding resolutions contemplate carrying out joint activities, such as training sessions on IP rights, which aim to publicize the use of the technological information services offered by the SPTO, the mechanisms for the protection of results research and technological development, in addition to offering each Platform the necessary support in the protection of its intangible assets in order to facilitate, promote and stimulate the knowledge and use of IP rights.

This collaboration with AIMPLAS, PLATECMA, PTECO2, Solar Concentra and PROTERMOSOLAR will allow to boost the competitiveness of the Spanish industry in the field of innovation and protection of the same in the corresponding sectors, and to establish bidirectional channels of institutional communication between the SPTO and each Platform specific.

On the other hand, the different platforms and associations that sign these agreements undertake to disseminate the importance and usefulness of IP, as well as its observance and the need to combat counterfeiting within their programs of activities.

The agreements thus signed are a cooperation tool for the promotion of IP and its benefits in the scientific, economic and social development of our country.

More information:
Resolution of the OEPM-AIMPLAS agreement published on July 3, 2021
Resolution of the OEPM-PLATECMA agreement published on July 5 , 2021 Resolution of the OEPM-PTECO2
agreement published on July 5, 2021
Resolution of the OEPM-SOLAR CONCENTRA agreement and PROTERMOSOLAR published on July 5, 2021“

“Swiss producers will in future be able to register geographical indications in several states simultaneously via a simple procedure. At its meeting on 18 August 2021, the Federal Council approved the entry into force of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications as well as the implementing ordinances per 1 December 2021.

You can find further information in the Federal Council’s media release.”